Petition for Writ of Mamdamus — In Re Hemphill

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03163 35 AR 3 6 200

IN THE

Supreme Court of the Wnited States

“In re ALLEGRA D. HEMPHILL”

Petitioner,

THE PROCTER & GAMBLE COMPANY,

KIMBERLY-CLARK CORPORATION,

and JOHNSON & JOHNSON

subsidiary McNEIL-PPC, INC.

Respondent(s).

On a Petition for an

EXTRAORDINARY WRIT OF MANDAMUS

to the United States Court of Appeals

for the Federal Circuit

PETITION FOR WRIT OF MANDAMUS

Allegra Hemphill, pro se

6217 Charnwood Drive

Rockville, Maryland 20852

(301) 897 - 2030

QUESTIONS PRESENTED FOR REVIEW

1. There was absolutely no verbal communication with

the district court judge, Judge Chasanow, in either case,

Hemphill v. Procter & Gamble Co. et al., 258 F. Supp. 2d. 410

(D. Md. 2003) DKC 2002-3736, or Hemphill v. McNeil-PPC,

Inc., 134 F.Supp. 2d. 719 (D.Md.2001 ) DKC 99-654. There

was “no day in court”, “ no jury trial” and “no hearing”. The

district court judge denies the constitutionality in a patent case

is prciected by a seventh amendment right (jury trial). Thus,

the extraordinary question for the Supreme Court is,

Is the way the district court judge interprets a Maryland

Local Rule 105.6 as “Fully briefed and no hearing

deemed necessary” unconstitutional?

2. The district court judge made a recent change in

Markman v. Westview Instruments, Inc., 52 F3d. 967, (Fed.

Cir. 1995) 979 (en banc), aff'd. 517 U.S. 370 (1996):

“claim construction is for “the court” to decide.”

This change could overturn the constitutionality in patent cases

being decided by a jury ‘rial. The change in Markman is

unclear about which court, is “the court” to apply the law 35

U.S.C.§ 112, 92 (ciains distinctly claiming ), but the Supreme

Court instructed ihe Federal Circuit to sharpen the criteria for

determining ecuivalency (element by element basis).

This change in controlling law “subverts the balances”

for the Federal Circuit to evaluate the full range of equivalency

under the doctrine of equivalents. The Federal Circuit had the

wrong impression that the law was already applied so that

neither court in this case completes claim construction in

the‘720 patent. The question before the Supreme Court is,

Without a jury trial, should the above change in law

include the Supreme Court as “the court” to decide and

settle the issue of claim construction under 35 U.S.C.

§112 for a literal analysis and/or doctrine of

equivalents?

3. The “automatic estoppel” in this case, anticipated

the applicant would surrender structure in the ‘720 patent,

while awaiting claim construction. The sole argument

permitted at summary judgement was “non-infringement”. The

cause of action: Literal Patent Infringement 28 U.S.C.§1338

was never heard and the application of patent law 35 U.S.C.§

112,492 was not performed. If the district court judge can deny

a literal analysis without showing her work or stating a reason,

and the factual determinations made by the district court judge

are essential to the judgement in the Federal Circuit

conflicting with other US Court of Appeals,

What are the factors to know there is a “genuine” issue

for a jury trial?

4 Lita Dich, oban .

ili

PARTIES TO THE PROCEEDING

AND RULE 29.6 STATEMENT

The parties to the proceeding, are, as follows:

The Petitioner is Allegra D. Hemphill.

The Procter & Gamble Company is a parent company

of Procter & Gamble Co. in Cincinnati, Ohio.

Kimberly-Clark Corporation in Dallas, Texas is a

parent company of Kimberly-Clark in Neenah, Wisconsin.

Johnson & Johnson , at One Johnson & Johnson Plaza

New Brunswick, New Jersey 08933 is a parent company of

McNeil-PPC, Inc.

TABLE OF CONTENTS

Page

* SI scicisivtecintisicsinihiaisianincsitiontilieiitadiiaininiia dail ee 1

Parties to the Proceeding and Rule 29.6 Statement.............. lil

Re re ON LN ER ae ONE iV

Re i iisibacciiitbiictrtniensiteniiieeiiimee Vi

GN OE IID sic cisishicssssesetniconscraccesiccinpiiehatslstssincsidbinabaancnil l

Statement of Jurisdiction................ccccccccssssscssscesssssccercccceeces |

Constitutional Provisions, Statutes and

I I aiicieetsisitiicwiintncichtcieiniciniensncicisidelaniigabinobenssni 2

STON OE Ge Cn iiiicssssctiiccsirniesinctssevcetesntcenesvnarieviieniutined apes 5

The District Court ProceedingS................cccsccssesseseees 7

The US Court of Appeals

for the Federal Circuits’ Decision ...............cccccscceeeee 9

FI I ice issseecciennitnsonsctcsnnninsniereitsenisversoeiioniecs 10

TABLE OF CONTENTS -Continued

Page

REASONS FOR GRANTING THE WRIT

A. To sanction the departure of a district court,

the US Court of Appeals for the Federal Circuit

has entered a decision in conflict with other US

Court of Appeals that calls for an exercise of the

Supreme Court’s supervisory OU iecnsipiniidonicsiviindapies 13

B. The US Court of Appeals for the Federal Circuit

has decided an important question of federal law that

has not been, but should be settled by this court......21

I icisivcscasisrsinettsesnasiincinitialaig aia ett tod haan 30

TABLE OF CONTENTS -Continued

Page

Supreme Court Rule 14(i) Appendix A

United States Court of Appeals

for the Federal Circuit, No. 03-1463,

Allegra Hemphill v. The Procter & Gamble Co.

v. Kimberly-Clark Corporation,

Judgement and Order Dated January 15, 2004 ...... 1A

Appendix B

United States District Court of Maryland,

DKC 2002-3736

Allegra Hemphill v. Procter & Gamble Co. et al.

Rehearing and Order dated June 11, 2003.............. 7A

Appendix C

United States District Court of Maryland,

DKC 2002-3736

Allegra Hemphill v. Procter & Gamble Co. et al.

Fact finding and Order dated April 15, 2003........ 11A

Supreme Court Rule 14(ii) Appendix D

US Court of Appeals for the Federal Circuit

Allegra Hemphill v. McNeil-PPC, Inc.,

Case No. 01-1391

Rehearing Order, December 21, 2001.................. 27A

Appendix E

US Court of Appeals for the Federal Circuit Allegra

Allegra Hemphill v. McNeil-PPC, Inc.,

Case No. 01-1391

DECIDED NOVEMBER 27, 2001............cccccceseeeee 28A

Vii

TABLE OF CONTENTS -Continued

Page

Appendix F ;

Unitea States District Court of Maryland,

DKC 99-654

Allegra Hemphill v. McNeil-PPC, Inc.

Rehearing and Order/opinion May] 1, 2001......... 41A

Appendix G -

United States District Court of Maryland,

DKC 99-654

Allegra Hemphill v. McNeil-PPC, Inc

Fact-finding and Order March 12, 2001............... 46A

Appendix H

United States District Court of Maryland,

DKC 99-654

Allegra Hemphill v. Johnson & Johnson

Order to Substitute McNeil-PPC, Inc.,

_ date of entry February 11, 2000

date filed February 14, 2000.................... 69A

Appendix I

United States District Court of Maryland,

DKC 2002-3736, Allegra Hemphill

v. The Procter & Gamble Company et al.

Defendant’s Motion for Stay Discovery

Order to Show Cause

Date of Entry February 12, 2003.............cccsceeeeee 70A

Vili

TABLE OF CONTENTS -Continued

Page

Appendix J

United States District Court of Maryland,

DKC 2002-3736,

Allegra Hemphill v. Procter & Gamble Company and

Kimberly-Clark Corporation

Civil Action No. DKC 2002-3736

Order, Date of Entry February 21, 2003 .............. T1A

Supreme Court Rule 14 (iii) Appendix K

US Court of Appeals for the Federal Circuit

Allegra Hemphill v. The Procter & Gamble Co.

v. Kimberly-Clark Corporation

Combined Rehearing and Rehearing En Banc

PE Bi Be ith ctettricinnatinncanrctinianiivtcenansinniovtinn 72A

Supreme Court Rule 14(v) Statutes and Regulations . ..74A

UNITED STATES DEPARTMENT OF COMMERCE

PATENT AND TRADEMARK OFFICE

Address: Commissioner of Patents and Trademarks,

Washington, DC 20231

Original claims in patent application ................... T9A

PTO Paper No. 4 Claims 1-6 pending.................. 81A

TABLE OF CONTENTS -Continued

Applicant’s Information Disclosure.................++ 83A

Cushman Darby Cushman Correspondence ........ 84A

EE IIIA. Fccantndditeeincsssevnnitntoinentessstuntiotnaanines 85A

Correspondence and Revocation

OE FE OE Fi sveceicceniceiccccscevcerssnssscss seseial 88A

Fe FEE FOR SO hsireenrceniassiticinceenignreneniionnneie 90A

Applicant’s Correspondence.............:sscsescsssesseees 94A

PTO Notice of Allowability.................ccccssseeeeees 96A

PTO Paper No. 3, patent application 619,684.....97A

Reexamination Request McNair Decision ...................006 99A

Reexamination Request Srininvasan et al Decision ....... 101A

Notice of Intent to Issue Reexamination Certificate......103 A

Statement of Reasons for Confirmation ................::0s008 104A

Reexamination Certificate ......................000ssseseeeeeeee 105-106A

TABLE OF AUTHORITIES

Cases Page

Alpex Computer Corp. v. Nintendo Co.,

og we Bye) Bee) Ls) ae 17

Bicourier v. Manan 86S. C&L, 1033 .iecsccceccevecesccesoseeersecooecenove 9

“a® v.F .. Inc

138 F3d. 1448,(Fed. Cir. 1998) 1456...............scccccsssecsessseees 18

In re Do nC

er ey Gai Fe iniiovceteniinieciinrennsccnicrnicinienemesiensnnat 27

EI fe) em & Co. v. Phillips P

849 F.2d. 1430 (Fed. Cir. 1988)1433 oo... eeccectececeeesseees 24

FestoCorp. v. Shoeke inzoku K. hiki

234 F3d. 558 (Fed. Cir. 2000)......10, 13, 15, 19, 20, 21, 22,29

n lery, Inc. v. Berkline Corp.

134 F3d. 1473 (Fed. Cir. 1998) 1476.............csscccsssessseeseseees 18

Georgia-Pacific v. US Gypsum Co. 195 F3d. 1322

iy Rem, Beer aks k : » 18, 19, 23

ve o. v. Linde Air Products Co.

Be es Br a inerncicniniesnncnsiaiantieninsienitiansiinienceeesaveveinn 20, 30

TABLE OF AUTHORITIES-Continued

Cases Page

Mas-Hamilton Group v. LaGard Inc.

156 F3d. 1206 (Fed. Cir. 1998) 121 Licc.ceccccccceccccecceosceceeee 18

Multiform Desiccants, Inc. v. Medzam, LTD,

133 F. 3d. 1473 (Fed. Cir. 1998) 1476........ccccccccccecsecceccsoceeee 17

Pfaf v.Wells Electronics, Inc.

FE DUDE, Ce, TIT FID a vsseicscceesvciesrccssececorsussersueceesecs 14

Renishaw PLC v. Marposs Societa Per Azioni ,

158 F3d. 1243 (Fed. Cir. 1998)1251 ou. ceccccccscsccscesceceee 6, 24

Techsearch, LLC v. Intel Corp.

286 F.3d. 1360 (Fed. Cir. 2002) 1377..0.....ccccccccessccecsecsececeee. aa

Texas Digital Systems v. Telegenex,

308 F3d. 1193 (Fed. Cir. 2002) 1201 ......c.ccccecccccccecceceee. 18, 24

Union Paper-Bag Machine Co. v. Murphy.

97 U.S. 120,125, 24 L. Ed., 935 ERPS ene Ee 25

Vitronics Corp. v. Conceptronic, Inc.,

SOP. 3d. 1576 Wed. Cir. 1996) 1582...0.0....ccecessccceecesseseeses.e.. 17

Warner-Jenkinson, Co. v. Hilton Davis Chem. Co..

520 U.S. 17, 21 (1997),

Pare MS I etisitcecs ccsvercecsctinetuls 16, 22, 23, 26, 27, 30

Xil

TABLE OF AUTHORITIES-Continued

Page

STATUTES

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28 U.S.C. nr eer situsinniinhiaiahladandlia 1,30

BR. TG cccscvesisrncsniserinsansineinennsinniiionnintonimemammnadliin 3

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CITATIONS OF OPINIONS

In the US Court of Appeals for the Federal Circuit,

Case No. 03- 1463, _Allegra Hemphill v. The Procter &

Gamble Co. v. Kimberly-Clark Corporation, is an

unpublished opinion by Randall R. Rader, William C.

Bryson and Arthur J. Gajarsa Circuit Judges, and authored bv

Randall Rader. (January 15, 2004). (App., infra, 1A-7A.).

In the United States District Court of Maryland, the opinion

of Deborah K. Chasanow, district court judge in DKC 2002-

3736, is reported at Hemphill v. Procter & Gamble Co. et al.,

258 F. Supp. 2d. 410 (D. Md. 2003) (App., infra, 11A-26A).

Hemphill v. McNeil-PPC, Inc . 25 Fed. Appx. 915,

2001 WL 1504561 (Fed. Cir.2002), is an unpublished

opinion by Raymond C. Clevenger, III, Arthur J. Garjarsa

and Timothy B. Dyk Circuit Judges, authored by Dyk. (App.

infra, 27A-40A). The opinion of the district court judge

Deborah K. Chasanow is reported at 134 F.Supp. 2d. 719

(D.Md.2001 ). (App., infra, 46A-69A ).

STATEMENT OF JURISDICTION

Judgement in the US Court of Appeals for the Federal

Circuit entered January 15, 2004. App. infra, 1A. The

Combined Panel Rehearing and Rehearing En Banc, was

denied February 23, 2004. App. infra, 72A-73A. Jurisdiction

in the Supreme Court is invoked under 28 U.S.C. § 1651(a).

iii

Pursuant to Title 35 United States Code 112, granting

an extraordinary writ of mandamus will aid the appellate’s

jurisdiction. Statutory language is mandatory which legally

PT ee Pee eee ae et

obligates this Court to implement the law. It is not optional

because “[s]tatutes are written instruments that all persons

are presumed to be aware of and are bound to follow.”

“Statutes like patents are enforceable ...” See Markman v.

Westview Instruments, Inc., 52 F3d. 967, (Fed. Cir. 1995)

987 (en banc), aff'd.Rule 20(3)(a). Exceptional circumstances :

warrant the exercise of the discretionary powers in the

Supreme Court because adequate relief regarding specific

issues unique to patent law could not be obtained in any

other form or from any other court.

Parties were notified as required under Rule 29.3.

CONSTITUTIONAL PROVISIONS,

STATUTES, REGULATIONS INVOLVED

1. The United States Letters Patent 4,557,720 is a

grant of intellectual property. The Constitution of the United

States provides:

Art. 1. Sec. 8.: “The Congress shali have power .. . to

promote the progress of science and useful arts, by

securing for limited times to authors and inventors the

exclusive right to their respective writings and

discoveries.”

Withholding claim construction is in violation of the

FOURTH AMENDMENT RIGHT.

“The right of the people to be secure in their persons,

houses, papers and effects, against unreasonable searches and

seizures, Shall not be violated, and no Warrants shall issue,

but upon probable cause, supported by Oath or affirmation,

and particularly describing the place to be searched, and the

persons or things to be seized.”

2. The lower courts are “unprepared” for such unique

circumstances regarding both, a pro se litigant exercising her

rights under 28 U.S.C. § 1654 and claims in the ‘720 patent

that were never amended. The lower courts did not address

the issue of patent law 35 U.S.C.§ 112,92 and more

specifically 35 U.S.C. §112,96.

See 35 U.S.C.§112 paragraph, 2, providing in pertinent part:

“The specification shali conclude with one or more

claims particularly pointing out and distinctly

claiming the subject matter which the applicant

regards as [her] invention.”

and see 35 U.S.C. §112, 96 which provides in pertinent part:

“An element in a claim for a combination may be

expressed as a means or step for performing a

specified function without the recital of structure,

material, or acts in support thereof, and such claim

shall be construed to cover the corresponding

structure, material, or acts described in the

specification and equivalents thereof.”

See 35 U.S.C.§ 112 at App., infra, 76A-77A.

3. The US Court of Appeals for the Federal Circuit

Rules of Practice (May 1, 2003) on page 135, 415 states in

relevant part: “Oral argument (usually 15 minutes or less) is

rarely needed in pro se cases.’ However, in the United States

District Court of Maryland, the district court judge denied a

jury trial in a patent case and imposed upon a Maryland Local

Rule105.6 that states in relevant part:

“Unless otherwise ordered by the Court, all motions

shall be decided on memoranda without a hearing.”

Since the 8" day of March 1999, a fair hearing was not

deemed necessary and there was no jury trial. The pro se

litigant has not spoken with the district court judge; has not

seen the district court judge; nor been face-to-face before the

district court judge nor any of the Federal Circuit Judges

deciding this patent infringement action during the entire five

(5) years. Therefore, the lower court is in violation of:

FIRST AMENDMENT RIGHTS.

“Congress shall make no law respecting an

establishment of religion, or prohibiting the free exercise

thereof, or, abridging the freedom of speech, or of the press,

or the right of the people to peaceably assemble, and to

petition the Government for a redress of grievances.”

SEVENTH AMENDMENT RIGHTS.

“In suits at common law, where the value in

controversy shall exceed twenty doilars, the right of trial by

jury shall be preserved, and no fact tried by a jury shall be

otherwise reexamined in any Court of the United States, than

according to the rules of the common law.

FOURTEENTH AMENDMENT RIGHTS.

“No state shall make or enforce any law which shall abridge

the privileges or immunities of citizens of the United States;

nor shall any State deprive any person of . . . property,

without due process of law; nor deny to any person within its

jurisdiction the equal protection of the laws.”

4. The patent owner has clean hands. Validity issues

were resolved before any and all lega! proceedings. App. 48A

at [FN2]. The results of two reexaminations in the United

States Patent and Trademarks Office (“the US PTO”) proved

that the patentability in claim 1 and 2 in the ‘720 patent is

confirmed and thus, the claims are reading exactly as they did

in the original patent application. See the ‘720 patent in

App. Vol. 2, 107-114A. See e.g., Reexamination Certificate

which states: NO AMENDMENTS HAVE BEEN MADE TO

THE PATENT. App., infra, 103A, 105A and 106A. (MPEP

§§2012.01 and MPEP§§ 2259).

STATEMENT OF THE CASE

The Petitioner, Allegra Hemphill, (“Hemphill”)

is the inventor and patent owner in the US Patent 4,557,720

(°720 patent) dated December 10, 1985. The elected species

is #4, Figures 8 and 9 in Col. 5 11.27 through Col. 6 Il. 58.

There are two independent claims. See App, infra 15A .

Claim 1 is asserted. .'

' At the time of naming a vaginal swab, the word “vaginal” was

readily defined in Webster’s New Collegiate Dictionary1281( 1979), as:

1. of, or relating to a theca. 2. Pertaining to the vagina. In fact, the

word “theca” in the American Heritage College Dictionary, 1405 (3™ ed.

1993) is defined as: a case, covering or sheath... In the claims, the word

“vaginal” pertains to outer housing as a container, cover or sheath.

A vaginal swab is defined in the claims in the ‘720 patent

Claim 2 reads: “an outer housing including an inner case member and

an outer case member ...” in Col. 7, Il. 6-9 in the ‘720 patent Claim 1

reads to “a closed end...open end outer housing” in Col. 6, ll. 59-66.

In the specification, Summary of the Present Invention

describes: “My device as set forth herein” is comprised of an outer

container...[T]he swab portion is preferably comprised of...in Col. 1 Il.

66 through Col. 2, ll. 9 and Col. 2 Il. 19-23 which is consistent with

“What I Claim” in Col. 6, Il. 59 through Col. 7, ll. 5. The structure for

an outer housing in the prosecution history supports the dictionary

definition for the word ‘vaginal’ defined in the American Heritage

College Dictionary, 1488 (3 ed. 1993) at: 2). Relating to or resembling

a sheath, which is ‘to encase or cover with’ quoting American Heritage

College Dictionary, 1254 (3 ed. 1993).

“In such a case, the definition selected by the patent applicant

controls. “The law provides a patentee with this opportunity..”

Renishaw PLC v. Marposs Societa’ Per Azioni 158 F.3d. 1243

(Fed Cir 1998)1249.

In the claims in the ‘720 patent, the word “swab” pertains to the

unit as [core member and adsorbent member] in Col. 6, 11.67 through

Col. 7, ll. 5 and the word swab pertains to the unit as [a core member,

porous material and the housing means] in Col: 7, ll. 10.

In the United States District Court for the District

of Maryland, Allegra Hemphill, proceeding Pro Se, filed her

complaint for cause of action: Literal Patent Infringement 28

U.S.C.§1338, on November 18, 2002 in Record No. 1 which

writes on page 4 at 99A:

“The asserted claim is claim 1 in the ‘720 patent.

Claim | is directed to species #4 in Col. 5, Il. 28

through Col. 6, Il. 58, figures 8 and 9 in the ‘720

Patent. The complaint writes on page 6, 910: “The

accused products designate at least, under the names

Kotex® Poise® by Kimberly-Clark Corporation and

Always® by Procter & Gamble Co.” ? Record 1.

The Procter & Gamble Co. and Kimberly-Clark

Corporation, brought two separate Summary Judgement

Motions for Non-infringement on F ebruary 11, 2003.’

Record 22 and Record 23. Hemphill filed her Response Brief

on February 25, 2003. Record 32. Procter & Gamble Co.

-The accused devices are known as ‘maxi pads’, ‘mini pads’,

‘ultra thins’ and ‘adult pads’.

. Tampax ® and Security ® were included as accused devices

when the Judge Chasanow focused on “an external cover, an internal

tubular member, and rotatable base.” Id., Col. 1, ll. 19-22 at 63A. This

structure in the Gelardin 2,393,677 Patent as a rotatable base or cam

wheel, is not a limitation in [species #4, claim 5 and 6 in the original

patent application 434,828 that are now claims | and 2 in the ‘720

patent].

i es onl ; x : :

and Kimberly-Clark Corporation filed two Reply Briefs on

March 11, 2003. Record 33 and Record 34. On April 15,

2004, the district court judge granted the corporations the

Motions for Non-infringement buttressing a Maryland Local

Rule 105.6 “Fully briefed and no hearing deemed

necessary.” App., infra, 12A.‘ Hemphill filed a timely

Rehearing Brief on April 21, 2004 in Record 37, which writes

in pertinent part:

“ (“Jury trial in patent cases is protected by Seventh

Amendment. Elimination of the jury is not this

court’s choice to make. The constitutional right alone

bars the majority’s rule. The majority today denies

200 years of jury trial on patent cases in the United

States . . . by simply calling a question of fact a

question of law. The Seventh Amendment is not so

readily circumvented.”) Markman _ v. Westview

Instruments Inc., 52 F.3d. 967 (Fed. Cir. 1995), on pg.

1000 at 3, The Constitution. See in Record 37, pg. 1.

Procter & Gamble Co. filed a Response Brief on May 2,

2003. Record 38. Kimberly-Clark Corporation filed their

Response Brief on May 9, 2003. Record 39. Hemphill filed

her Reply Brief on May 12, 2003. Record 40. The district

court judge Chasanow, denied Rehearing citing a Maryland

: See “Fully briefed and no hearing deemed necessary” in

Hemphill v. McNeil-PPC, Inc., 134 F. Supp. 2d. 719 (D. Md. 2001).

App., infra, 48A.

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Local Rule 105.6 “Fully briefed and no hearing deemed

necessary” on June 11, 2004. App. 8A. Notice of Appeal

was filed on June 16, 2003. Record 41.

In the US Court of Appeals for the Federal

Circuit, the t’ ief ix were filed as

required in the Guide for Pro Se Petitioners and Appe!lants

which was filed on July 14, 2003. The Procter & Gamble Co.

filed a Statement and Kimberly-Clark Corporation filed a

Formal Response Brief and Appendix. On December 15,

2003, Hemphill filed a Motion for Oral Argument. The court

denied Hemphill’s Motion for Oral Argument on December

16, 2003 which was mailed December 29, 2003. The US

Court of Appeals for the Federal Circuit affirmed on January

15, 2004. Hemphill filed a Combined Panel Rehearing and

Rehearing en banc on January 29, 2004 which was denied on

February 23, 2004. The mandate issued on March 1, 2004.

Therefore,

“(T]he orderly administration...of the patent laws

requires that ultimate review still be available [in the

Supreme Court] regardless of the route chosen by the

litigants.”Brenner v. Manson 86 S. Ct. 1033.°

’ “Statutory interpretation is a matter of law strictly for the

courts.” See Markman at 987. Instruction(s) from the Supreme Court

validates that the statute 35 U.S.C. §11292 is not discretionary law.

/ 10

FACTUAL BACKGROUND

The “[p]atent prosecution is an iterative process in

which the applicant typically submits claims that are

thought to be allowable, the examiner rejects the

claims in view of the prior art, and the applicant then

amends the claims to traverse the examiner’s

patentability rejections.” FestoCorp. v. Shoeketsu

Kinzoku Kogyo Kabushiki 234 F3d. 558 (Fed. Cir.

2000) 618.

However, it is a ‘manifest injustice’ for a district court

judge to apply a prosecution history estoppel to claims that

were not amended in the ‘720 patent:

Claims 5 and 6 in the patent application 619,684 are

now claims | and 2 in the Hemphill ‘720 patent. The

claims are reading the same and exact way, as they

did during the original patent application 434,828 at

App., infra, 80A. During the prosecution history

phase, claims 5 and 6 were withdrawn from

consideration thus, safeguarding to protect them. See

e.g., Paper No. 7 at 85A and Paper No. 10 at 90A.

There were no amendments. Paper No. 10 at 90-93A.

The PTO did not reject claims 5 and 6 which are now

claims | and 2 in the ‘720 patent. See File Wrapper

regarding species election #4, figures 8 and 9 at App.

initia ieiiacauiiiiasiiiaala

ee a ee =

94A-95A.° See the decision in the US PTO:

“Election was made without traverse in Paper No. |

as filed with continuation application papers

[619,684] ... The claims readable on the elected

species are 5 and 6. Accordingly, claims 1-4 have

been canceled.” App. 96A.

Claims 5 and 6 were allowable. App. 97A-98A.

Hemphill behaved responsibly in the US PTO, yet

Judge Chasanow misstated the facts. See App. infra, 13A-

16A and 49A - 53A. In point of fact, the corporate entity,

Johnson & Johnson, insisted it was Hemphill’s responsibility

to file two reexamination proceedings regarding their prior art

and Hemphill was obliging to their requests in 1998. See

App. infra, 99A-106A. °

The prior art McNair US Patent 4,285,343 (“the

‘343 patent”) was not relevant under 35 U.S.C. 102

and not relevant under 35 U.S.C. 103. 99A-100A.

The prior art of Srininvasan et al. US Patent

(3,973,5567) (“the ‘567 patent”) was in_nowise

equivalent to the Hemphill ‘720 patent. App. infra ,

*The applicant instructed the Law Offices of Cushman, Darby

Cushman to disclose prior art See App., infra, 83A-84A.

° The district court judge denied Hemphill the ‘right to sue’

Johnson & Johnson. See e.g., App. infra, 47A and 69A.

101A-104A. Claims 1 and 2 were confirmed

There were no changes in the specification and no

changes in the drawings and no changes in the claims

1 and 2. App. infra, 103A.

See it is written: “NO AMENDMENTS HAVE

BEEN MADE TO THE PATENT” at 105A-106A.

The district court judge did not know that an owner of

a patent has the validity of a patent tested in the US PTO,

where the most eapert opinion exists. A reexamination will

ensure that whatever happens during a reexamination

proceeding, when it is concluded the Commissioner will issue

a certificate setting forth the results of the proceeding and the

content of the patent. App., infra, 105A-106A. The

authority in the US PTO found no ambiguity in the claims in

the ‘720 patent and the record in the US PTO is clear-cut,

having been:

“[rjeviewed by patent examiners, quasi-judicial

officials trained in the law... having expertise in

interpreting the [prior art] references and to be

familiar with their work with the level of skill in the

art and whose duty it is to issue only valid patents.”

Markman v. Westview Instruments, Inc., 52 F3d. 967,

(Fed. Cir. 1995) 986 (en banc), aff'd.

The reexamination proceedings proved irrefutably,

that accused devices are not sanitary napkins in the prior art

scat isco —

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‘367 patent, nor in the prior art ‘343 patent.’ None of the

corporations label the accused devices as “sanitary napkins”

on the packaging and none of the corporate Respondents

have a patent that covers the devices accused of infringing.

The corporations did not contest any decision(s) or office

actions by the US PTO, net at anytime.

A. To sanction the departure of a district court,

the US Court of Appeals for the Federal Circuit

has entered a decision in conflict with other US

Court of Appeals that calls for an exercise of the

Supreme Court’s supervisory power

“Congress specifically created the Federal Circuit to

resolve issues unique to patent law.” “Such as prosecution

history estoppel which is judicially created doctrine.”

FestoCorp. v. Shoeketsu Kinzoku Kogyo Kabushiki 234 F3d.

558 (Fed. Cir. 2000) 571. For fair consideration and equal

protection under the law, a full de novo review is “due

process”. In this case, claim construction under the law

35 U.S.C.§112 is the indispensable and fundamental basis in

the search for truth. It is being withheld and thus, denied.

Congress entrusted the Federal Circuit as the court to

"The district court judge made procedural errors by referring to

accused devices as “sanitary napkins” before reviewing all the evidence.

See e.g., App. 14A and 23A.

enforce the law unique to patent cases. However, the

mandatory, statutory requirement 35 U.S.C. §112, 2 is

absent from each and every opinion by Judge Chasanow.

As proof, there is absolutely no mention of the law under

35 U.S.C. §112, 92, nor any reference to the law in any of

her judgements or opinions in order for the court to enforce

the law. Without any justifiable reason, this district court

judge has forsaken the supreme law of the land that protects

‘claims pointing out and distinctly claiming ...which the

applicant regards as [her] invention’. Judge Chasanow

personally decided not to obey the law in 35 U.S.C. §112, 2,

as well as 35 U.S.C. §112, 96: ‘shall be construed to cover

the corresponding structure, material, or acts described ‘n

the specification and equivalents thereof’. Judge Chasanow’s

repudiation of the law, in and of itself, is a factual dispute

that gives grounds for a jury trial. See App. infra, 22A at

[FN 4]and 61A-65A. For this reason, a pro se litigant, must

not be deprived of an opportunity to bring a literal patent

infringement action simply because the district court judge is

erring.® The Petitioner is the patentee/applicant to which the

SThe controlling law is clear: “at the summary judgement

stage, the judge’s function is not herself to weigh the evidence... but to

determine whether there is genuine issue for trial.” “fact-finding is an

inappropriate exercise on summary judgement: “by making such a

factual finding the court improperly resolved a disputed material factual

issue.” Pfaf v.Wells Electronics, Inc. 5 F3d. 514 (Fed. Cir. 1993) 519.

Poe a eS eae geet

TON eee ee Ne ee m he

patent law protects under 35 U.S.C. §112,9 2 and Judge

Chasanow rejected the law. The record in the US PTO

proved the claims in the ‘720 Patent were never amended so

that

“No reason or warrant exists for limiting application

of the doctrine of equivalents to those comparatively

few claims allowed exactly as originally filed and

never amended” See _FestoCorp. v. Shoeketsu

Kinzoku Kogyo Kabushiki 234 F3d. 558 (Fed. Cir.

2000) 618.

Claim construction is flawed because it is incomplete.

Now, claim construction is in a state of delay because there

are two unnecessary estoppels in claim 1. The district court

judge applied a prosecution history estoppel from an earlier

case, and also, applied ‘a general collateral estoppel

principle’ that was beyond the Federal Circuit’s jurisdiction.

See App., infra, 5A and see 22A:

“These are the definitions against which the accused

products must be compared to determine whether they

infringe on claim 1 of the ‘720 patent.”

The district court juige merely identified names in the claim

with the specification, but the district court judge did not

construe “a vaginzl swab” “a core member”, “an outer

housing” or adsorbant member” with the elements in claim |

See Pfaf v. Wells Electronics, Inc cited at 6A and 21A.

which thereby goes against the controlling law that

“(T]he doctrine of equivalents” should be applied as

an objective inquiry on an element- by- element basis”

Warner Jenkins 117 S.Ct. 1040. 1044, 1054.

The district court’s above definitions as “terms” were

deferred to the Federal Circuit with Judge Chasanow citing a

change in Markman v. Westview Instruments, Inc., 52 F3d.

967, (Fed. Cir. 1995) 979 (en banc), aff'd.:

“Ta]s it is well-settled that claim construction is a

matter of law for the court to decide. Id.” at App.

10A.?

Thus, when the Federal Circuit agreed only to affirm “terms”,

and did not review these terms with the elements in the claim

nor enforce the law 35 U.S.C. §112, 42, the district court’s

above change in controlling law became a “subversion”:

Because claim construction is a matter of law, the

construction given the claims is [and must be]

reviewed, de novo, on appeal.” See Markman v.

Westview Instruments, Inc., 52 F3d. 967, (Fed. Cir.

1995) 979 (en banc), aff'd. 517 U.S. 370 (1996).

Since the Federal Circuit and the US PTO are jointly

re: »onsible for the overall administration of the patent

system, claim construction, de novo, is what sustains the

° See “Claim construction is correctly a matter of law for

the court to decide. Id.” at App. 19-20A and 59A. “Claim construction

is properly a matter of law before the court.” App. 43A.

dignity in this part of the judicial process. Departure from

this accepted and usual course of proceedings wreaks havoc.

The Federal Circuit did not read the record in the US PTO,

for them, to know that no amendments were made in the

patent. Instead, the Federal Circuit has twice denied “due

process in claim construction ” thereby deviating so far from

the norm it is orbiting into immense space. The Federal

Circuit is in direct conflict with the controlling law, as well

as, other decisions in the US Court of Appeals that supports

a full de novo review for claim construction, on appeal:

“Because claim construction is a matter of law, the ©

construction given the claims is reviewed, de novo, on

appeal.” See Markman v. Westview Instruments

_—_— nee ASA ELES,

Inc., 52 F3d. 967, (Fed. Cir. 1995) 979 (en banc),

aff'd. “Claim construction is a matter of law, which

we review de novo.” See Alpex Computer Corp. v.

Ninetendo Co. Ltd. 102 F3d. 1214 (Fed. Cir. 1996)

1218:citing Markman. “The first step, claim

_construction, is a matter of law, which we review de

novo.” See Vitronics Corp. v. Conceptronic, Inc., 90 F.

3d. 1576 (Fed. Cir. 1996). 1582.citing Markman. “On

appellate review the Federal Circuit again construes

the claims, determining de novo the correct

construction.” See Multiform Desiccants Inc. v.

Medzam Ltd., 133 F3d. 1473 (Fed. Cir. 1998). 1476.

"{ojur infringement analysis invoives only claim

construction, a question of law which we review de

novo.” See Gentry Gallery, Inc. v. Berkline Corp.

134 F3d. 1473 (Fed. Cir. 1998) 1476 Citing

Markman. “Claim construction is a question of law,

reviewed non-deferentially on appeal.” See Mas

Hamilton Group v. LaGard Inc. 156 F3d. 1206 (Fed.

Cir. 1998) 1211 citing Cybor Corp. v. FAS Techs.,

Inc. 138 F3d. 1448,1456(Fed. Cir. 1998) (“holding

“we review claim construction de novo on appeal”.)

“The first step, claim construction, is a question of

law, which we review de novo.” See Georgia-Pacific

v. US Gypsum Co, 195 F3d. 1322 (Fed. Cir. 1999).

1330. “Claim construction is a question of law that

this court reviews de novo.” See Texas Digital

Systems v. Telegenex, 308 F3d. 1193 (Fed. Cir.

2002) 1201.

Hence, the district court judge “hushed the law” by making

a change in Markman “[{cjlaim construction [is for the court

to decide]” rather than “[c]laim construction [is reviewed de

novo on appeal”]. Judge Chasanow misguided the law in

such a way that the Federal Circuit forbears its duty and

obligation. The Federal Circuit [held back ] or withheld the

progress that relies upon a full de novo review so that both of

the lower courts violated the first and fourth amendment right

“to a hearing” and “right to be secure in the intellectual

property”.'° For this reason, the supervisory power in the

Supreme Court must be faithful to the patent laws in this

unique process under 35 U.S.C. §112, 92. In this way, it is

law-abiding that

“The Supreme Court refused to apply prosecution

history estoppel regardless of the reason for

amendment, expressly because to do so would

“subvert the various balances”...” FestoCorp. v.

Shoeketsu Kinzoku Kogyo Kabushiki 234 F3d. 558

(Fed. Cir. 2000) 619.

However, in the ‘720 patent, there are no amendments.

In other words, “no amendments —no prosecution history

estoppel”. “In cases where a patentees amendments were not

required in response to an examiners rejection or critical to

the allowance of the claims no estoppel has been found” in

Georgia-Pacific v. US Gypsum Co. 195 F3d. 1322 (Fed. Cir.

1999), 1333. Hemphill did not narrow the claims and

Hemphill did not limit the scope. See App. infra, 34A-38A

in Hemphill v. McNeil-PPC, Inc . 25 Fed. Appx. 915, 2001

WL 1504561 (Fed. Cir.2002). The supervisory power in the

Supreme Court is petitioned because

- The citation of the Maryland Local Rule 105.6 “...no

hearing deemed necessary” is screaming with violations of the first :

seventh and fourteenth amendment rights ‘to speak and be heard at jury

trial’ in Hemphill v. McNeil-PPC, Inc., 134 F. Supp. 2d. 719 (D. Md.

2001) . See e.g., App., infra, 8A, 12A and 48A.

“(t]he majority recasts “prosecution history estoppel”

in a legally incorrect and equitably unjust manner.”

Festo Corp. 631. “[i]mposing an absolute estoppel

against equivalency- instead of sharpening the criteria

for determining equivalency (as the Supreme Court

instructed) -make manifest the magnitude of the

majority’s change in the law.” __FestoCorp._ v.

Shoeketsu Kinzoku Kogyo Kabushiki 234 F3d. 558

(Fed. Cir. 2000) 631-632.

It is ‘obvious error’ the district court judge has not

accomplished the patent law 35 U.S.C.§112,] 2 to evaluate

the elements in the claim | and it is an exceptional showing

of error’ that the Federal Circuit did not protect the law 35

U.S.C.§112 to fulfill claim construction de novo on appeal.

“{T]he Supreme Court undertakes review for obvious and

exceptional showings of error”, Graver Tank& Mfg. Co. v.

Linde Air Products Co. 69 S. Ct. 537-538. Otherwise,

“[T]he majority’s new rule hands the unscrupulous

copyist a free ride on potentially valuable patented

technology...” “Such an unscrupulous copyist

appropriates the substance of the invention while

avoiding the letter of the claims, yet adds nothing to

the technology.” FestoCorp. v. Shoeketsu_Kinzoku

Kogyo Kabushiki 234 F3d. 558 (Fed. Cir. 2000). 626

B. e US Court of Appeals for the Federal

Circuit has decided an important question of

federal law that has not been, but should be settled

ee Ie SECLICU

by this Supreme Court.

This Supreme Court must be the first court to decide

and settle the issue for a range of equivalency. It is a federal

question involving federal law in claims that were never

amended, as well as, elements in the claim that were never

discussed. See App. infra,34A-38A. The district court

conspired to apply prosecution history estoppel to claims that

were not amended, then failed to interpret “range of

equivalency” about the extraneous property limitations

imposed. See App. infra, 60A-65A and see App. infra, 22A.

“[Likewise], .. . imposing a complete and automatic bar to

the doctrine of equivalents for claim limitations amended for

patentability reasons will have adverse, unfair and unintended

consequences.” FestoCorp. v. Shoeketsu Kinzoku Kogyo

Kabushiki 234 F3d. 558 (Fed. Cir. 2000) 619. Arbitrarily

imposing a prosecution history estoppel, regardless to

whether the claims are amended or not, encroaches upon the

rights of the patentee/applicant. The district court judge

places ‘unfair burden’ on the patent owner to further prove

claims that respectively have presumption of validity.

Application of a prosecution history estopp | based on

assumptions that a claim is “usually” amended is legal

mischief setting out to undo the System. See App. infra,

48A - 53A. Here, it is only fair to understand “why” the

judge resorts to such inequity in this case. The reasoning

may be predicated on a lack of readiness or failed

communication:

“Because the Supreme Court has not fully addressed

the range of equivalents ... we must independently

decide the issues. FestoCorp. v. Shoeketsu

Kinzoku Kogyo Kabushiki 234 F3d. 558 (Fed. Cir.

2000 )571.

However, courts do not usually render judgements based on

”

“choosing terms” or “naming names in a claim” without

construing all the elements in the claim. “Each element

contained in a patent claim is deemed material to defining the

scope of the patented invention, and thus the doctrine of

equivalents must be applied to the individual elements of the

claims...” Warner-Jenkins 117 S. Ct. 1040, 1049. Instead,

the Federal Circuit sought to “[{a]ccommodate regional

circuit law to procedural issues that are not themselves

substantive patent law issues.” Techsearch, LLC v. Intel

Corp. 286 F.3d. 1360 (Fed. Cir. 2002) 1377. If the Federal

Circuit assumes that claims | and 2 are identical via some

“general collateral estoppel principle” from the Fourth

Circuit, then the Federal Circuit must please be careful not to

vitiate the elements in the claims themselves. App. 4A-6A.

The elements in a claim make the two claims in the ‘720

patent “not identical”:

(“Both this Court and the Supreme Court have made

clear that all elements of a patent claim are material

with no single part of aclaim being more important or

‘essential’ than_another.”) Markman _v.Westview

Instruments, Inc. 52 F3d. 967 (Fed. Cir 1995) 988.

By granting a writ of mandamus, “[t]he doctrine of

equivalents should be [and must be] applied as an objective

inquiry on an element- by- element basis” Warner Jenkins

117 S.Ct. 1040. 1044, 1054. 2 The four portions or

components/parts to be a vaginal swab are based upon

“terms” that the Federal Circuit affirmed and as the element

in claim | reads in the ‘720 patent for:

“A vaginal swab comprised of... "

“A vaginal swab will have many uses because the way

the consumer makes use of a vaginal swab is entirely up to

them”"* The term “vaginal” is being construed “to cleanse or

lathe writ persuades the court to perform claim construction

that is ‘entire’ or ‘whole’: a) having no part excluded or left out; b) with

no reservations or limitations; c) containing all components; complete.

as The transitional term comprising is inclusive or open-ended

and does not exclude additional, un-recited elements or method steps.”

See Georgia-Pacific v. US Gypsum Co. 195 F3d. 1322 (Fed. Cir. 1999),

1327. See Manual of Patent Examining Procedure in patent law:

See§2111.03 (6" ed. 1997).

" [A]n elongated structure «or ; simply means the

structure is longer than it is wide.

treat vaginal area.” App., infra, 4A,91. The words “internal”

or “external” are not limitations in the claim:

“It is improper for a court to add extraneous

limitations added wholly apart from any need to

interpret what the patentee meant by particular

words or phrases in the claim” Renishaw PLC v.

Marposs Societa Per Azioni , 158 F3d. 1243 (Fed.

Cir. 1998). “...reading the words in such a confined

way would mandate the wrong result and would

violate our proscription of not reading limitations

from the specification into the claims” Texas Digital

Systems v. Telegenex , 308 F3d. 1193 (Fed. Cir.

2002) “Where a specification does not require a

limitation that limitation should not be read into the :

claims.” “We know of no principle of law which

would authorize us to read into a claim an element

which is not present” E.I. DuPont De Nemours & Co.

Phillips Petro. 849 F2d. 1430 (Fed. Cir. 1998) 1433.

Claim | reads: “adsorbent member being secured to

said core member...” '4

The accused devices have an [adsorbent member].

4 ‘ ‘ . -

'4 The element in claim 2 reads “...at least one layer of said

porous material...said core member and the said porous padding

secured thereto...’

It is the “[a]bsorbent material with a flexible thin porous

membrane that covers over or around a flexible sheet [as core

member] but does not cover-up for the annular band in Col.

5, lI.36-38 in the ‘720 patent. See App. 30A. To Clarify the

way of absorbing, the US PTO cited prior art Alvarez 4,177,

811 Patent. The US PTO agreed: “... in which an absorbent

member is enclosed therein” at App. 99A “Decision”93,'°

The function of an adsorbency characteristic is: two fibers

working together which helps improve absorbing. See

“adsorbent pad or layer is secured” in Col. 2, Il. 5-8 in the

‘720 patent. The accused devices function “to keep one

clean” “to help reduce odors and odor causing ammonia”or

“keeping one fresh and clean” etc.. See App., infra, 65A-66A.

“[The accused devices] are the same, even if they

differ in name, form or shape”_Union Paper-Bag

Machine Co. v. Murphy. 97 U.S. 120,125, 24 L. Ed.,

935 (1878).

CORE MEMBER. The element in claim 1 reads:

“core member being secured within said housing...”

whereas, the element in claim 2 reads:

“a core member is being secured to said housing means..”

In claim 1, a core member “secured within said housing” is a

a See Dri-weave® in Always®, Dry Touch Layer or Dry

Layer Plus ® in Poise® and Kotex ®. Stayfree ® Carefree ® and

Serenity ® have Silky Clean Cover ®, and Dry Cottony Cover ®.

unit as [a core member, adsorbent member and housing] in

Col. 6, ll. 39-40, and/or, the unit is [a core member and

adsorbent member] that is capsuled in Col. 5, ll. 32-33. '®

Only claim 2 has means-plus-function language,

35 U.S.C.§112,] 6, so that any restrictive role of narrowing

claim 1 would not apply to

“(t]he proviso that application of broad literal

language of such claims must be limited to only those

means that are “equivalen[t]” to the actual means

shown in the patent specification..” Warner-Jenkinson

117S. Ct. 1040, 1048.

The claims do not read “fairly rigid core member.”

In fact, in claim 2, the district court judge left out the law \1e

US PTO cited in re Donaldson Co. 16 F3d. 1189 (Fed. Cir.

1994) as a stipulation for the courts to Jook to structure in

species #4 in the Hemphill ‘720 patent, 35 U.S.C. §112, 46.

See App., infra, 104A and 53A."’ For this reason:

l6The accused devices named Tampax® and Security ®, at

App. 17A, have [a core member and adsorbent member] as a unit within

a closed end and open end outer housing. See App. Vol. 2, 384A. The

accused devices such as the Kotex ® and Always® as maxi-pads etc.,

are a unit as [core member, adsorbent member and housing means]

within outer housing. See App. Vol. 2, 385A.

" The Federal Circuit affirmed structure as a stick or wire,

citing American Heritage Dictionary 1810 (3d ed. 1992); see also

Dorland’s Medical Dictionary 1617 (28" ed. 1994). App. 22A.

“There is no basis for treating an infringing

equivalent any differently from a device that infringes

the express terms of the patent. Apvlication of

doctrine of equivalents is akin to determining literal

infringement, and neither requires proof of intent.”

Warner -Jenkins 117 S. Ct. 1040, 1052.

“The proper time for evaluating interchangeability,

whether an accused element is equivalent to a claimed

element, is at the time of infringement.”

The element in claim 1 reads: “an annular base

To ascertain a core member in species #4:

See prior art Fielding 3,731,682 patent: (“...string or cord may

be employed”) in Col. 4, 11.35-40 at App. Vol. 2, 169A.

A core member taught in the prior art of McNair 4,285,343

patent was not relevant under 35 U.S.C. 102 and not relevant under 35

U.S.C. 103. App., infra, 99A-100A. This firm wooded stick or cudgel

is short and heavy.

Prior art Srininvasan 3,973,567 patent was readable in claim 2.

See a flat flexible sheet as a core member (“...may comprise a fluid

impermeable sheet material such as polyethylene or polypropylene

cellophane or other similar films”), Col. 4, 11.5-12 at App. Vol. 2, 331A.

The structure was ‘one-sided’ in the ‘567 patent and not as good as the

Hemphill ‘720 patent. App., infra, 101A, 102A and 104A. Thus, a

cogent point of novelty in claim 2 in the ‘720 patent is a core member on

that one side (102) is suxzred by this other side as “the housing means”

(106) which is a form of conizc' See App. Vol. 2, 383A. Remarkably,

only the Hemphill ‘720 patent has structure worthy to be the housing

means in claim 2 or as a closed end in claim 1.

with an outer diameter equal to the inner diameter of said

annular band ..” This structure is “OUTER HOUSING”."*

In fact, “the annular band” that is at, or around the base of the

core member is ‘the handle structure’ described in the

specification as: “providing protection for the swab while

packaged and a handie during use to provide better control

over swab [during or at some time in use]”in Col 2, ll. 1-4.

On accused devices, the handle structure is the closed end in

claim | or housing means in claim 2 [paper or plastic sheet]

which is fitting within an open end outer housing [wrapper].

See e.g., App 30A.

“The Supreme Court does not limit the doctrine of

equivalents “to equivalerts that are disclosed within

the patents itself, reasoning that the “proper time for

evaluating equivalency . . . is at the time of

infringement, not at the time the paterit was issued.”

117 S. Ct. 1040 FestoCorp. v. Shoeketsu Kinzoku

Kogyo Kabushiki 234 F3d. 558 (Fed. Cir. 2000) 566.

18 See an outer housing in prior art Bower 4,159,718 patent in

Col. 1, ll. 29-31. (“...comprising two rectangular sheets ...”) in Col. 1,

ll. 57-58 at App., Vol. 2, 197A.

See a cover in prior art Johansson 4,165,942 patent:

(‘“‘...protective cover which can be opened up at ..1e end ...and folded

back to expose..”) in Col. 1, ll. 48-55. App. Vol. 2, 20A1.

See a sheath in Schuster 4,157,709: “comprises an outer

sheath, an intermediate tube slidable there within....”). Col. 2, Il. 60-66.

App. Vol. 2, 190A.

A purpose or function of is structure is to keep dirty hands

or sticky fingers away from the fibers.'? The core member and

adsorbent member wiil not fall away and dirty hands will not

contaminate the fibers because the unit is safely and

effectively capsulated within an open end outer housing

[wrapper]. Such a receptacle is a protective covering from

danger, risk and loss as the element in claim 1 reads: ae

pair of hinged housing segments defined by a plurality of

frangible seams .. . ”.2°

The range of “use” can be interpreted “as for use” or

“as for disposal” because claim 1 reads to “removable

members” and claim 2 reads to “two portions movable .. .

when in said second position” However, the Federal Circuit

affirmed “terms” for an outer housing that is ‘not to be

removed’ and ‘functions as a handle’ at App. 22A. In this

way, the Federal Circuit affirmed claim 1 in the first position

as the element in claim | reads “ . . . secured within said

housing so that the adsorbent member and core member are

enclosed therein [or safely inside]”.

19 as

Any addition of a “gluey’ or tacky substance on the

‘accused’, is irrelevant to the above element in the claim.

°° ‘The first position is secured until i is “essentially peeled

away from an enclosing protecting relationship” in Col. 2, Il. 19-21 in

the ‘720 Patent. See frangible seams “116” ir, App., Vol. 2.at 383A.

Accused devices were changed to become like a vaginal swab for

reasons of safety and effectiveness,

I ee ee

The accused devices have the admirable qualities and

features of a vaginal swab as defined in the asserted claim |

in the Hemphill ‘720 patent. Hemphill [has shown]

“equivalence” between the elements of the Accused Products

and the claimed elements of the ‘720 patent, Warner-

Jenkinson, Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21

(1997), by showing that the Accused Products “perform[ ]

substantially the same function in substantially the same way

to obtain the same result” as the claimed elements of the ‘720

patent which proves infringement under the doctrine of

equivalents. Graver Tank & Mfg. Co. v. Linde Air Prods.

Co., 339 U.S. 605, 608 (1950).”

CONCLUSION

It is necessary the Supreme Court therefore conclude

the circumstances are extraordinary under 28 U.S.C. 1651(a)

and please grant the petition for writ of mandamus.

Respectfully submitted,

Allegra Hemphill, pro se

6217 Charnwood Drive

Rockville, Maryland 20852

(301) 897 - 2030

22 The district court judge allowed ‘no hearing”. Therefore,

Hemphill provided actual exhibits of accused devices labeling the four

components/ parts to be a vaginal swab, as well as, illustrations of the

accused device(s) in a side by side comparison with the elements in the

claims. See App. Vol. 2, 372-381A.

‘United States Court of Appeals for the Federal Circuit

03-1463

ALLEGRA D. HEMPHILL,

Plaintiff-Appellant,

PROCTER & GAMBLE CO.,

Defendant-Appellee,

KIMBERLY-CLARK CORPORATION

Defendant-Appellee.

RADER, BRYSON, and GAJARSA, Circuit Judges.

RADER, Circuit Judge.

DECIDED: JANUARY 15, 2004

JUDGEMENT ENTERED JANUARY 15, 2004

nite VatessCuut we. 4pjrals fan the Federal Circuit

03-1463

ALLEGRA D. HEMPHILL,

Plaintiff-Appellant,

PROCTER & GAMBLE CO.,

Defendant-Appellee,

KIMBERLY-CLARK CORPORATION

Defendant-Appellee.

JUDGEMENT

ON APPEAL from the United States District Court for the

District of Maryland

IN CASE NO(S): 2002-3736

This CAUSE having been heard and considered, it is

ORDERED and ADJUDGED:

AFFIRMED

ENTERED BY ORDER OF THE COURT

Jan15, 2004 /s/

/ksb

DATE Jan Horbaly, Clerk

ISSUED AS A MANDATE: MARCH 1, 2004

NOTE: Pursuant to Fed. Cir. 47.6, this disposition is

not citable as precedent. It is public record.

United States Court of Appeals for the Federal Circuit

03-1463

ALLEGRA D. HEMPHILL,

Plaintiff-Appellant,

PROCTER & GAMBLE CO.,

Defendant-Appellee,

KIMBERLY-CLARK CORPORATION

Defendant-Appellee.

DECIDED: January 15, 2004

Before RADER, BRYSON, and GAJARSA, Circuit Judges.

RADER, Circuit Judge.

The United States District Court for the District of

Maryland granted summary judgement of noninfrignement

in favor of defendants-appellees Kimberly-Clark

Corporation and The Procter & Gamble Company |

(appellees). The district court held that defendants’

products do not infringe claim 1 of U.S. Patent No.

4,557,720 (The ‘720 patent) owned by pro se plaintiff-

appellant Allegra Hemphii!l. Because the district court

properly granted summary judgement, this court affirms.

BACKGROUND

In a previous action, appellant sued McNeil-PPC,

Inc. alleging infringement of claim 2 of the ‘720 patent. The

‘720 patent claims a disposable vaginal swab or refresher

used to cleanse or treat the vaginal area. The district court

in that case construed various claim terms in claim 2 and

granted summary judgement of noninfrignement in favor of

McNeil-PPC. See Hemphill v. McNeil-PPC, Inc., 134 F.

Supp. 2d. 719 (D. Md. 2001). This court affirmed that

judgement in an unpublished decision dated November 27,

2001. See Hemphill v. McNeil-PPC, Inc., 25 Fed. Appx.

915 (Fed. Cir. 2001).

Appellant filed this action in late 2002 asserting

claim 1 of the ‘720 patent. Claim 1 contains many of the

same claim terms_that this court construed in the previous

action with respect to claim 2. The district court applied the

doctrine of collateral estoppel to hold that the interpretation

of claim terms in claim 2 in the prior action applies to those

same terms in claim 1 in this action. The district court

found no material factual dispute concerning the accused

products and held, as a matter of law, that appellees’

products do not infringe claim 1 under the required claim

construction.

DISCUSSION

This court reviews a district’s grant of summary

judgement without deference. Because the application of

general collateral estoppel principles is not a matter within

the exclusive jurisdiction of this court, this court must apply

the law of the circuit in which the district court sits.

Pharmacia & Upjohn Co. V. Mylan Pharms. Inc., 170 F3d.

1373, 1381 n.4 (Fed. Cir. 1999). Under the law of the

Fourth Circuit, the application of collateral estoppel is a

legal determination reviewed de novo. See Tutlle v.

Arlington County School Bd., 195 F3d. 698, 703 (4" Cir.

1999). Collateral estoppel applies where:

(1) the issue sought to be precluded is identical to

one previously litigated; (2) the issue [was] actually

determined in the prior proceeding; (3) determination of the

issue was a critical and necessary part of the decision in the

prior proceeding; (4) the prior judgement [is] be final and

valid; and (5) the party against whom estoppel is

asserted...had a full and fair opportunity to liti gate the issue

in the previous forum.” lack v. Braswell Servs. Grou

Inc., 134 F. 3d. 219, 224 (4" Cir. 1998).

Appellant’s appeal focuses solely on claim

construction. Appellant seems to argue that the district court

should have performed a de novo evaluation of the terms in

claim | using intrinsic evidence from the patent rather than

adopting portions of the claim construction of claim 2 from

the previous litigation. To the contrary, the meaning of

several claim terms in this litigation is identical to the

meaning accorded those same terms in the earlier case. The

earlier case litigated and decided the meaning of those terms

in claim 1. Thus, the appellant has already received a full

and fair opportunity to prove the meaning of those contested

terms. The district court in this case correctly determined

that the claim construction from the earlier case governs

many of the terms in this case as well. Appellant has not

indicated any flaw in the district court’s collateral estoppel

analysis. The record shows that the district court’s

determination of the meaning of identical terms in the

earlier case was essential to the judgement in that case. As

noted, the parties had a full and fair opportunity to litigate

the issues. Therefore, the district court in this case properly

estopped the appellant from retrying those issues.

The district court correctly recognized that identical

claim terms cannot be given a different meaning in different

claims of the same patent unless the patent clearly provides

otherwise. See Georgia-pacific Corp. v. United States

Gypsum Co,, 195 F3d. 1322, 1331 (Fed. Cir. 1999).

Because the claim construction of claim 2 in the prior action

satisfies the principles of collateral estoppel, it is applicable

in this action. See Pfaff v. Wells Elecs.. Inc., 5 F.3d. 514

(Fed. Cir. 1993). Consequently, claim terms in claim]

identical to terms defined in the previous action must carry

that same meaning.

Appellant does not argue that the district court erred

in applying the properly construed claims to the accused

products. Appellant’s arguments merely express

disagreement with the interpretation of the claim terms in

dispute. Again, those issues have been fully litigated,

decided by the district court, and affirmed by this court.

Therefore, this record presents no reason for this court to

depart from the earlier claim construction. This court

perceives no error in the district court’s summary judgement

of noninfrignement. That judgement is, therefore, affirmed.

UNITED STATES DISTRICT COURT

FOR THE DISTRICT COURT MARYLAND

ALLEGRA D. HEMPHILL

v. Civil Action No. DKC 2002-3726

(Exempt from ECF)

PROCTER & GAMBLE CO.., et al.

REHEARING DENIED

ORDER and MEMORANDUM OPIN ION

Date of entry: JUNE 11, 2003

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT COURT MARYLAND

ALLEGRA D. HEMPHILL

v. Civil Action No. DKC 2002-3726

(Exempt from ECF)

PROCTER & GAMBLE CO., et al.

ORDER

For the reasons stated in the foregoing Memorandum

Opinion , it is this 11" day of June 2003, by the United

States District Court for the District of Maryland,

ORDERED that:

1. Plaintiff's motion to alter or amend judgement

pursuant to Fed. R. Civ. P. 59(e) BE, and the same hereby

IS, DENIED; and

2. The Clerk shall transmit copies of the

Memorandum Opinion and this Order to Plaintiff and

counsel for Defendants.

/s/

Deborah K. Chasanow

United States District Judge

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT COURT MARYLAND

ALLEGRA D. HEMPHILL

v. Civil Action No. DKC 2002-3726

(Exempt from ECF)

PROCTER & GAMBLE CO., et al.

MEMORANDUM OPINION

Presently pending and ready for resolution is Plaintiff

Allegra D. Hemphill’s motion, pursuant to Fed. R. Civ. P.

59(e), to alter or amend the court April 15, 2003 order

granting Defendants’ motions for summary judgement of

noninfringement . The issues have been fully briefed and no

hearing is deemed necessary. Local Rule 105.6. For reasons

that follow, the court shall deny the motion.

I, Standard of review

“A motion for reconsideration [pursuant to Fed. R.

Civ. P. 59(e) is granted only in limited circumstances.”

Micorbix Biosystems, Inc. v. Biowhittaker, Inc., 184 F.

Supp. 2d. 434, 436 (D.Md. 2000) . “[{T]he federal courts

generally have invoked Rule 59(e) only to support

reconsideration of matters properly encompassed in a

decision on the merits.” White v. New Hampshire Dept. of

Employment Sec., 455 U.S. 445, 451 ( 1982). It may be

made for one of three reasons:

(1) to accommodate an intervening change in

controlling law; (2) to account: for new evidence not

[previously] available...; or (3) to correct a clear error of law

or prevent manifest injustice. Hill v. Braxton, 277 F3d. 701,

708 (4" Cir. 2002). “[A] motion to reconsider is not a

license to reargue the merits or present new evidence.”

Royal Insurance Co. of America v. Miles & Stockbridge,

P.C. 142 F.Supp. 2d. 676, 677 n. 1 (D. Md. 2001), citing

RGI, Inc. v. Unified Indus., Inc. 963 F2d. 658 (4" ir. 1992).

Il. Analysis

Plaintiff's motion does not satisfy any of the three

potential grounds for reconsideration under Rule 59(e).

She has presented neither new evidence nor intervening

changes in controlling law, nor has she established that the

court’s decision was clearly erroneous or resulted in

manifest injustice. Rather, she proffers the same arguments

regarding claim construction previously submitted in her

Opposition to Defendant’s motions for summary judgement,

which the court has already rejected. Thus, Plaintiff is

attempting simply to reargue the merits of the case, which

is not permissible under Rule 59(e) motion to alter or amend

a judgement. Plaintiff's suggestion that the court erred in

not allowing claim construction to be decided by a jury is

without merit, as it is well-settled that claim construction is

a matter of law for the court to decide. See Markman vy.

Westiview Instruments, Inc., 52 F3d. 967,979 (Fed. Cir.

1995)(en banc), aff'd, 517 U.S. 370 (1996).

III. Conclusion

For the foregoing reasons, the court will deny

Plaintiff Allegra D. Hemphill’s motion to alter or amend

judgement. A separate Order will be entered.

/s/ Deborah K. Chasanow

United States District Judge

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UNITED STATES DISTRICT COURT

FOR THE DISTRICT COURT MARYLAND

ALLEGRA D. HEMPHILL

Vv. Civil Action No. DKC 2002-3726

(Exempt from ECF)

PROCTER & GAMBLE CO., et al.

FACT FINDING

ORDER and MEMOR.ANDUM OPINION

ENTERED; April 15, 2003

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MARYLAND

ALLEGRA D. HEMPHILL

V. Civil Action No. DKC 2002-3726

(Exempt from ECF)

PROCTER & GAMBLE CO.., et al.

ORDER

For the reasons stated in the foregoing Memorandum

Opinion, it is this 15" day of April, 2003, by the United

States District Court for the District of Maryland,

ORDERED that:

1. Defendant’s Motions for Summary Judgement BE,

and the same hereby ARE, GRANTED;

2. JUDGEMENT BE, and the same hereby IS,

ENTERED in favor of Defendants Kimberly-Clark

Corporation and The Procter & Gamble Co., and against

Plaintiff Allegra D. Hemphill;

3. Defendants’ counterclaims for declaratory

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judgements of noninfrignement BE, and the same hereby

ARE, DISMISSED without prejudice; and

4. The Clerk shall transmit copies of the

Memorandum Opinion and this Order to Plaintiff and

Counsel for Defendants and CLOSE this case.

/s/

DEBORAH K. CHASANOW

United States District Judge

C/M 4/15/03

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT COURT MARYLAND

ALLEGRA D. HEMPHILL

v. Civil Action No. DKC 2002-3726

(Exempt from ECF)

PROCTER & GAMBLE CO., et al.

MEMORANDUM OPINION

Presently pending and ready for resoiution are the

motions for summary judgment of noninfrignement filed by

Defendants Kimberly-Clark Corporation (“Kimberly-

Clark”)

and The Protect & Gamble Co. (“Procter & Gamble”), as

well as Defendants’ counterclaims for declaratory

judgements of noninfrignement. The issues have been fully

briefed and no hearing is deemed necessary. Local Rule

105.6. For reasons, that follow, the court shall grant

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Defendants’ motions for summary judgement and dismiss

the counterclaims without prejudice.

i. Background

A. Procedural History

This is the second lawsuit brought in this court by Plaintiff

Allegra D. Hemphill against manufacturers of personal care

products for alleged infringement of her US Patent No.

4,557,720 (the ‘720 patent”). In the first lawsuit, Hemphill

v. McNeil-PPC, Inc., Civ. A. No. DKC 99-654 (“Hemphill

I”), Plaintiff alleged that the defendants STAYFREE and

CAREFREE feminine sanitary napkins and SERENITY

adult napkins products infringed claim 2 of her ‘720 patent.

In that case, after ruling on the meaning of the claim terms

and concluding that the accused products do not infringe

claim 2 of the ‘720 patent, the court granted the defendant’s

motion for summary judgement. See Hemphill v. McNeil-

PPC, Inc., 134 F. Supp. 2d. 719 (D. Md. 2001). The Court

of Appeals for the Federal Circuit affirmed the decision on

November 27, 2001 in an unpublished opinion. 25 Fed.

Appx. 915 (Fed. Cir. 2001).

In November 2002, Plaintiff filed the current action

alleging infringement by Kimberly-Clark’s KOTEX and

POISE product lines and Procter & Gamble’s ALWAYS and

TAMPAX products lines (“the accused products”)'.

‘Although TAMPAX expressly mentioned in the complaint,

Plaintiff's opposition suggests that she regards TAMPAX as an accused

product, and Procter & Gamble has inchided the product in its summary

judgement motion. See Paper no. 32,at 29; Ex. C3. Accordingly, the

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Products bearing the KOTEX and ALWAYS brand names

are feminine sanitary napkins. Products bearing the KOTEX

SECURITY and TAMPAX brand names are tampons, and

those bearing the POISE brand names are adult napkins.’

Defendants Kimberly-Clark and Procter & Gamble filed

separate motions for summary judgement of

noninfrignement with regard to their accused products.

Each Defendant has asserted a counterclaim for a

declaratory judgement of noninfringement , but has said that

it would consent to dismissal without prejudice of the

counterclaim if its motion for summary judgement is

granted.

B. Background of the ‘720 Patent

Plaintiff filed her application for the ‘720 patent with

the Patent and Trademark Office (“PTO”) on June 11, 1984,

and her patent was subsequently issued on December 10,

court will include TAMPAX in this opinion. The judgement motion

with respect to the ALLDAYS pantiliner product and the ENVIVE

miniform product which are not mentioned anywhere by the Plaintiff,

but are included by the Defendant “for the sake of the completeness.”

The opinion will be limited to the allegedly infringing products actually

before the court. | |

*Plaintiff’'s complaint accuses Kimberly-Clark’s KOTEX of

infringement, but does make clear whether she is referring to KOTEX

sanitary napkins, KOTEX SECURITY tampons, or both. Her

opposition, while not a model of clarity, suggests that she is accusing

both types of products. The court’s infringement analysis will therefore

will include both KOTEX sanitary napkins and KOTEX SECURITY

tampons.

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1985. See paper no. 1, Ex. A. Bearing the title “Vaginal

Applicator”, the ‘720 patent describes a disposable vaginal

swab or refresher meant either to cleanse or treat the vaginal

area with fragrances, medications, germicide or deodorants.

Id., Ex. A. Col. 1, lines 33-38. The ‘720 Patent has two

independent claims, but only claim 1 is at issue in this

litigation. The description contained in claim 1 of the

Applicator is as follows:

1. A vaginal swab comprised of an outer housing

having a closed and open end on opposing ends thereof, said

housing including an annular band defining said open end

and a plurality of frangible seams that together define a pair

of removable members and a pair of housing segments

hingably secured to said annular band following removal of

said members, a swab core member having a predetermined

exterior shape, said core member having an annular base

with an outer diameter equal to the inner diameter of said

annular band and an adsorbent member secured to said core

member, said core member being secured within said

housing so that said adsorbent member is enclosed therein.

Id., Ex. A. Col. 6, line 1- Col. 7, line 5.

Claim 2, which was the claim at issue in Hemphill I,

provides as follows:

2. A vaginal swab comprising an outer housing

including an inner case member and an outer case member

at least part of which is connected to and said overlies inner

case member;

a core member, at least one layer of porous material secured

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to said core member, and housing means for both supporting

and enclosing said core member, said core member being

secured to said housing means, having at least two portions

movable relative to one another between first and second

positions for enclosing said core member when in said first

position and for both, exposing said core member and the

said porous padding secured thereto and for forming a

handle for said swab when in said second position. Id., Ex.

A, Col. 7, line 6 -Col. 8, line 10.

In addition to claiming a “vaginal swab”, both claims

require the “outer housing” and “core member” that were

construed by the court in Hemphill I. °

C. Accused Products

KOTEX _ sanitary napkins, ALWAYS sanitary

napkins and POISE aduit napkins are sold in bags or boxes

containing multiple napkins, which are individually

wrapped in plastic. See Declaration of Herbert E. Grube,

Paper no. 22, Ex. Al. 9 5 (“Grube Decl.”); Declaration of

Mary Jo Myer, Paper no. 22 Ex. A2, § 5 (“Meyer Decl.”);

Declaration of Thomas W. Osborn III, paper no. 23, Ex. 2,

q 4 (“Osborn Decl.”). The sanitary napkins are composed of

an absorbent core material placed between a flexible liquid

pervious topsheet and a liquid-impervious plastic backsheet

that has an adhesive on the outside for attaching the napkin

to an undergarment. See Grube Decl. 4 6; Meyer Decl. ¥ 6;

*For a description of the prosecution history of the ‘720 patent

and the reexamination proceedings, see Hemphili I, 134 F. Supp. 2d. At

721-23.

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Osborn Decl. | 4 4-5. The side of the plastic backsheet

containing the adhesive has a thin paper sheet to it to protect

the adhesive. See Grube Decl J 6; Meyer Decl. 7; Osborn

Decl.¥ 5.

In order to use the sanitary napkins, the consumer

removes the plastic wrapper from the product, peels off the

thin paper sheet, and affixes the adhesive side to the

undergarment. See Grube Decl. 47; Meyer Decl.¥ 8;

Osborn Decl. {J 6-7. The napkins are intended to passively

collect fluid during use. See Grube Decl. q9; Meyer Decl.

{ 10; Osborn Decl. ¢ 7. The napkins are not designed to be

used or placed internally into the vagina. See Grube Decl.

11; Meyer Decl. J.12; Osborn Decl. { 9. After use, the

consumer removes the napkin from the undergarment and

discards it, either directly or by first wrapping it in the

plastic wrapper of the next napkin.. See Grube Decl.] 8;

Meyer Decl. ¥ 9; Osborn Decl. 8.

KOTEX SECURITY tampons and TAMPAX

tampons are also generally sold in bags or boxes containing

multiple individually-wrapped tampons. See Grube Decl. q

16; Osborn Decl. 21. Each tampons is composed of a

piece of absorbent material made from cotton and or rayon

surrounded by a liquid pervious overwrap. A string is

attached to the bottom of the absorbent piece, which is

compressed into a plastic applicator. See Grube Decl. 417;

Osborn Decl. | 20. To use the tampon the customer

removes the plastic wrapper, inserts the applicator into the

vagina and expels the tampon from the applicator into the

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vagina by pressing the inner tube up into the outer tube. See

Grube Decl. | 418-19; Osborn Decl. § 23. The applicator

is then removed, leaving the tampon in the vagina to

passively collect fluid. See Grube Decl. 419; Osborn Decl.

4 23. After use, the consumer removes the tampon by

pulling on the string and then discard it either directly or by

wrapping the used tampon in the plastic wrapper of the next

tampon. See Grube Decl. 410; Osborn Decl. 23.

II. Standard of Review

In patent cases, as well as in other cases, a motion for

summary judgement will be granted only if there exists no

genuine issues as to any material fact and the moving party

is entitled to judgement as a matter of law. Fed. R. Civ. P.

56(c); Anderson V. Liberty Lobby Inc., 477 U.S. 242, 250

(1986): Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986):

Clark v. Alexander, 85 F3d. 146, 150 (4" Cir. 1996). The

moving party bears the burden of showing that there is no

genuine issue of material fact. Fed. R. Civ. P 56(c): Pulliam

810 F2d. 1286 (citing Charbonnages de France v. Smith,

597 F2d. 406, 414 (4" Cir. 1979).

When ruling on a motion for summary judgement the

court must draw all reasonable inferences in favor of and

construe the facts in the light most favorable to the non-

moving party. Tinsley v. First Union Nat’l Bank, 155 F3d.

435, 437 (4" Cir. 1998). A properly supported ‘notion for

summary judgement may not be defeated by “the mere

existence of some alleged factual dispute between the

parties”. Anderson , 477 U.S. at 247-48. Further, while the

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court is charged with liberally construing a complaint filed

by a pro se litigant to allow the development of a potentially

meritorious case, the requirement of liberal construction

does not mean that the court can assume the existence of a

genuine issue of material fact where none exists. Weller y.

Dept. of Social Services, 901 F. 2d. 387, 391 (4" Cir. 1990);

Beaudett v. City of Hampton, 775, 775 F2d. 1274, 1277 (4%

Cir. 1985).

Although an infringement analysis usually involves

both fact and law, summary judgement of noninfrignement

may still be proper. Nike, Inc. v. Wolverine Worldwide, Inc.,

43 F3d. 644, 646 (Fed. Cir. 1994); Chemical Eng’g Corp. v.

Essef Indus. Inc., 795 F2d. 1565, 1571 (Fed. Cir. 1986). A

good faith dispute about the meanings and scope of asserted

claims does not, in and of itself, create a genuine dispute to

preclude summary judgement in patent cases. Lantech Inc.

v. Keip Mach. Co., 32 F.3d. 542, 546 (Fed. Cir. 1994),

III. Analysis

Plaintiff alleges that the accused products infringe on

claim 1 of the ‘720 patent. In order to assess Defendants’

motions for summary judgement of noninfrignement, the

court must engage in a two-step infringement analysis. “The

first step is determining the meaning and the scope of the

patent claim asserted to be infringed. The second step is

comparing the properly construed claims to the device

accused of infringing. Markman v. Westview Instruments,

Inc. 52 F.3d. 867, 979 (Fed. Cir. 1995); en banc, aff'd 517

U.S. 370 (1996). Claim construction is correctly a matter of

19A

law for the court to decide. Id. When construing a claim a

court should look to the intrinsic evidence, i.e., the patent

itself, its claims, written description, and the prosecution

history. See Vitronics Corp. v. Conceptronic, Inc. 90 F3d.

1576, 1582 (Fed. Cir. 1996). Additionally, statements made

during the reissue [reexamination] proceeding “are relevant

prosecution history when interpreting claims.” E£. I. Du

Pont de Nemours & Co. v. Phillip Petroleum Co., 849 F2d.

1430, 1439 (Fed. Cir. 1988). Prosecution history need not

relate to the particular claim at issue in a claim in order to

be relevant, so long as the prosecution history in question

relates to the same claim term as in the asserted claims. See

Alpex Computer Corp. v. Nintendo Co., 102 F.3d. 1214,

1220 (Fed. Cir. 1996).

A. Claim Construction

In Hemphill I, the court construed the terms “vaginal

swab”. “outer housing”, and “core member,” and the Federal

Circuit affirmed these constructions. Defendants argue that

under the doctrine of collateral estoppel, or issue preclusion,

the meaning of these terms as construed by the court in

Hemphill I must apply in the instant case as well. There are

four factors that must be met for collateral estoppel to apply:

(1) the issue was identical to_one decided in an earlier

action; (2) the issue was actually litigated in earlier action;

(3) resolution of the issue was essential to a final judgement

on the merits and (4) the plaintiff had a full and fair

opportunity to litigate the issue in the earlier action. See

Molinaro v. Fannon/Courier Corp., 745 F.2d. 651, 655

20A

(Fed. Cir. 1984); 4.B. Dick Co. v. Burroughs Corp. , 713

F.2d. 700, 704-704, (Fed. Cir. 1983). The Federal Circuit

lias held that collateral estoppel applies to issues of claim

construction. Specifically, ‘“where a determination of the

scope of the patent claims was made in a prior case, and the

determination was essential to the judgement thereon the

issue of infringement there is collateral estoppel in a later

caseé on the scope on such claims.‘” Pfaff v. Wells

Electronics, Inc., 5 F3d. 514, (Fed Cir. 1993), quoting

Molinaro, 745 F2d. At 655.

Plaintiff's opposition appears to focus solely on the

first required factor for collateral estoppel. Plaintiff argues

that collateral estoppel to claim construction in this suit

because the first suit pertained to alleged infringement of

claim 2, while this suit concerns claim 1. However, the

claim terms construed in Hemphill I, appear in both claims

1 and claim 2. It is well-settled law that unless the patent

provides otherwise, a claim term cannot be given a different

meaning in various claims of the same patent. See Georgia-

Pacific Corp. v. United States Gypsum Co., 195 F.3d. 1322,

1331 (Fed., Cir 1999): Southwall T, ech., Inc. v. Cardinal IG

Co., 54 F.3d. 1570, 1579 (Fed. Cir. 1995). Plaintiff has not

demonstrated that anything in the patent requires that terms

be given a different construction in claim 1 than in claim 2.

Thus, the issue in this Suit, i.e., the meaning of “vaginal

swab”, “outer housing”, and “core member,” is the same

issue already decided in Hemphill I. Plaintiff's attempt to

describe claim 1 as “structural” in order to distinguish it

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from claim 2 is unpersuasive, in part because claim 2 is also

a structural claim (as opposed to a process or method claim).

Because the requirements for collateral estoppel have

been met, the claim construction established in Hemphill I,

must be given collateral estoppel effect on claim

construction in this case. Accordingly, Plaintiff is

collaterally estopped from arguing, as she tries to do in her

opposition motion, for a new construction of the claim terms

“vaginal swab”, “outer housing” and “core member”.

In Hemphiil I, the court construed “vaginal swab”

as “a small piece of absorbent material attached to the end

of a stick or wire and used for cleansing or applying

medicine,” meant to be used within the vaginal canal. ‘

See Hemphill I, 134 F. Supp 2d. At 726-27, citing

American Heritage Dictionary 1810 (3d ed. 1992); see

also Dorland’s Medical Dictionary 1617 (28" ed. 1994).

The court construed the term “outer housing” as a device

that serves as a handle structure for the use of the swab

and is not designed to be removed and thrown away. Id.

At 727. “Core member” was construed by the court as “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,” Id. These are the definitions against which the

accused products must be compared to determine whether

they infringe on claim | of the ‘720 patent.

‘The court expressly rejected the argument that Plaintiff again

tries to make in this case that “vaginal” refers to the outer housing as the

cover or sheath. 134 F.Supp 2d. At 726.

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B. Comparison to Accused Products

1. Literal Infringement

A claim of literal infringement requires proof that

the accused devices meet every limitation of the properly

construed claims. See Gentry Gallery, Inc. v. Berkline

Corp., 134 F. 3d. 1473, 1476 (Fed. Cir. 1998). “If even

one limitation is missing or not met as claimed, there is

no literal infringement.” Mas-Hamilton Group v. LaGard

Inc., 156 F.3d. 1206, 1211 (Fed. Cir. 1998). Defendants

argue that because their products lack several limitations

of claim 1, there can be no literal infringement as a matter

of law.

a. KOTEX, POISE and ALWAYS sanitary

napkins

Like the products in Hemphill I, the accused

Sanitary napkins in the current case do not function as

“vaginal swab” as required by the claims in the ‘720

patent. Plaintiff herself has stated that her vaginal swab

does not resemble, behave , or function like a sanitary

napkin. See Paper 22, Ex. D1 at PTO 00440. As

discussed earlier, the Sanitary napkins are intended to

cover a portion of an undergarment to passively collect

fluid. They do not consist of a piece of absorbent material

attached to the end of a stick or wire and are not designed

for internal vaginal use. Indeed, they are neither the size

nor shape that would allow for internal use.

Moreover, the structure of Plaintiff's invention

differs greatly from the accused Sanitary napkins. The

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sanitary napkins do not have an “outer housing” structure

that is designed to be utilized as a handle for the use of a

swab, as required by the ‘720 claims. The accused

sanitary napkins merely have a plastic outer wrapping that

is thrown away once the napkin is utilized. At most, the

discarded wrapper covers the used and soon-to be

discarded napkin. The plastic wrapping is in no way

equivalent to the handle function of the “outer housing”

in Plaintiffs invention.

Additionally, the accused sanitary napkins lack 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. While the sanitary napkins do have an absorbent

core, the core is soft and pliable, not “fairly rigid”, and

they do not have an annular band or ring that can fit into

the band or ring of an outer housing. Given the absence of

the foregoing elements from the accused sanitary napkins,

Plaintiff has failed to establish that the accused products

literally infringe upon her ‘720 patent.

B. KOTEX SECURITY and TAMPAX tampons

Similarly, Kimberly-Clark’s KOTEX SECURITY

tampons and Procter & Gamble’s TAMPAX tampons do

not literally infringe upon the ‘720 patent. Although they

are intended for internal vaginal use, the accused tampons

are not “swabs”. They do not consist of a small piece of

absorbent material attached to the end of a stick or wire;

the string attached to the tampons only allows the user to

remove the tampon, not to manipulate it. In addition, the

24A

tampons are designed to absorb menses, not to clean or

apply medicine.

| Furthermore, the accused tampons do not have an

“outer housing” structure that is designed to be used as a

handle for the swab, as required by the ‘720 claims. The

tampon applicator does not transform into a handle after

the tampon is inserted, but is instead designed to be

completely removed and thrown away. Finally, the

accused tampons lack a core member with an annular

band or ring at the base that can fit into the band or ring

of an outer housing. Because the accused tampons lack

several elements, they too do not literally infringe on

claim 1 of the ‘720 patent.

2. Doctrine of Equivalents

Under the doctrine of equivalents, a product

which does not literally infringe upon the express terms

of a patent may nonetheless infringe if there js

“equivalence” between the elements of the accused

products and the claimed elements, of the patent. Zelinski

v. Brunswick Corp., 185 F.3d. 1311, 1316 (Fed. Cir.

1996), citing Warner-Jenkinson, Inc. v. Hilton Davis

Chem Co. 520 U.S. 17, 21 (1997). Infringement occurs

under the doctrine of equivalents if the difference

between the particular element and the claim limitation

are “insubstantial.” Id. A test to determine

“insubstantiality” is whether “the element performs

substantially the same function in substantially the same

way to obtain substantially the same result as the claim

25A

limitation.” Id., at 1316-17, citing Graver Tank & Mfg.

Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950).

Plaintiff has not demonstrated that the differences

between the elements in claims 1 or 2 of the ‘720 patent

and the accused products are insubstantial. Each of the

accused products lacks numerous structural limitations of

the ‘720 patent and serves a different function. As

mentioned earlier, plaintiff herself noted during

prosecution and reexamination proceedings that her

invention, a vaginal swab, does not look, behave or

function like a sanitary napkin. See e.g., Paper no. 22,

Ex. D1 at PTO 0040. Accordingly, the court finds that no

reasonable jury could find there to be equivalence

between the accused products and Plaintiffs invention.

IV. Conclusion

Because there is no genuine issue of material fact

and Defendants are entitled to judgement as a matter of

law, the court shall grant Defendants’ motions for

summary judgement of noninfringement . Defendants’

counterclaims for declaratory judgements of

noninfringement will be dismissed without prejudice. A

separate Order wiil be entered.

DEBORAH K. CHASANOW

United States District Judge

April 15, 2003

26A

UNITED STATES COURT of APPEALS

for the FEDERAL CIRCUIT

ALLEGRA D. HEMPHILL, Plaintiff-

MCNEIL-PPC, INC., Defendant -Appellee.

No. 01-1391

REHEARING DENIED

Date of entry December 21, 2001.

ORDER

Before CLEVENGER, GAJARSA, and DYK,

Circuit Judges.

A petition for rehearing having been filed by the

APPELLANT, UPON CONSIDERATION THEREOF » it

Appellant,

ORDERED that the petition for rehearing be, and the

same hereby is, DENIED.

The mandate of the court will issue on December

28, 2001.

FOR THE COURT

“5 9

Jan Horbaly

Clerk

Dated: December 21, 2001

cc: Allegra Hemphill

George F. Pappas

HEMPHILL V. MCNEIL-PPC, 01-1391

(DCT -99-CV-654)

a . —

FILED

U.S. COURT OF APPEALS FOR

THE FEDERAL CIRCUIT ;

DEC 21 2001

JAN HORBALY

Note: Pursuant to Fed. Cir. R. 47.6, this order is not

citable as precedent. It is a public record.

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition

is not citable as precedent. It is a public record. This

disposition will appear in tables published periodically.

UNITED STATES COURT of APPEALS

for the FEDERAL CIRCUIT

ALLEGRA D. HEMPHILL Plaintiff-Appellant,

MCNEIL-PPC, INC., Defendant -Appellee.

No. 01-1391

DECIDED NOVEMBER 27, 2001.

Before CLEVENGER, GAJARSA, and DYK,

Circuit Judges. DYK, Circuit Judge.

Allegra Hemphill (“Hemphill”) appeals the

decision of the United States District Court of Maryland

granting McNeil-PPC Inc.’s (“McNeil”) motion for

summary judgement that McNeil-s sanitary napkin

products do not infringe Hemphill’s U.S. Patent No.

4,557,720 (the “720 patent”). Hemphill v. McNeil-PPC,

Inc., 134 F. Supp. 2d. 719 (D. Md. 2001). Because the

28A

district court Properly construed the asserted claim of the

‘720 patent and properly determined that McNeéeil’s

Sanitary napkin products do not infringe that claim as

matter of law, we affirm.

BACKGROUND

Hemphill is the inventor and patentee of the ‘720

patent, which relates to a “Vaginal Applicator”. The

patent describes a disposable vaginal swab or refresher

meant either to cleanse or to treat the vaginal area with

fragrances, medications, germicides, or deodorants. Col.

1, Il. 34-38. The ‘720 patent has two independent Claims,

but only claim 2 is at issue on appeal. Claim 2 of the ‘720

patent reads as follows:

2. A vaginal swab comprising an outer housing

including an inner case member and outer case

member at least part of which is connected to and

overlies inner case member; :

a core member at least one layer of porous material

secured to said core member, and housing means

for supporting and enclosing said core member,

said core member being secured to said housing

means, having at least two portions movable

relative to one another between first and second

positions for enclosing said core member when in

said first position and for both exposing said core

member and the said porous padding secured

thereto and for forming a handle for said swab

when in said second Position.

29A

*720 patent, col. 7, 1. 6-col.8, 1.10.

McNeil manufactures and sells several families of

sanitary napkin products including Stayfree sanitary

napkins, Carefree, sanitary napkins. Serenity adult

napkins. For purposes of determining infringement.

McNeil’s Stayfree, Carefree, Serenity products (the

“Accuse Products”) are nearly identical in design.

Hemphill, 134 F. Supp. 2d. At 723. The following

description of the Accused Products is undisputed:

The Accused [Products] are sold in multiple units

in large plastic bags, inside of which are individual

napkins packaged in plastic wrappers. Each of

these individual units is composed of absorbent

material with a flexible thin porous membrane that

is attached on one side to a flexible plastic sheet

that has an adhesive on the other side. In its

packaging, the side of the plastic sheet containing

the adhesive is attached to a thin paper sheet.

In order to use the napkin, the consumer removes

the plastic packaging, and peels off the thin paper

sheet. Then, the consumer presses the side with

the adhesive to the undergarment in order to attach

the napkin to the undergarment. The napkin is

intended to passively collect fluid during use.

After use the consumer pulls on the napkin to peel

it off of the undergarment, and then discards it,

either directly or by first inserting the napkin into

the plastic wrapper of the next napkin. The

30A

ee et

. re os

——

ly i vagi av

t hav ial.

Id. At 723-34 (emphasis added) (citations omitted).

Hemphill sued McNeil in the United States District

Court for the District of Maryland, alleging that several

families of McNeil’s Sanitary napkin product lines

infringe the ‘720 patent. McNeil moved for summary

judgement of noninfrignement at the close of discovery.

The district court first construed claim2 of the ‘720

patent. Looking to the intrinsic evidence, the district

court construed the claim language in light of the

specification and prosecution history. Hemphill, 134 F.

Supp. 2d. At 725-27. For example, the district court

found that during the prosecution phase, Hemphill

narrowed her claims to distinguish her invention from

prior art. And further limited the scope of her invention

during two re-examination Proceedings. Id. At 721-722.

On the basis of this intrinsic evidence, the district court

interpreted claim 2 to require a “vaginal swab” to be used

within the vaginal canal and to be comprised of four

component parts: (1) an outer housing; (2) a core member;

(3) at least one layer of porous material; and (4) a housing

means. Id. At 728.

The district court then compared claim 2 as

construed to the Accused Products, and concluded that the

Accused Products, as a matter of law, did not infringe the

‘720 patent. Id. At 729. As for literal infringement, the

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district court found that “the structure of [Hemphill’s]

invention differs vastly from the accused devices on each

element.” Id. At 728. As for infringement under the

doctrine of equivalents, the district court found that

Hemphill “failed to offer a single assertion illustrating

that the difference between the elements of her invention

and the accused devices is only insubstantial. Rather, the

evidence establishes [that] the difference is vast.” Id. At

729.

Accordingly, the district court granted McNeil’s

motion for summary judgement of noninfringement

Hemphill then filed a Motion for Reconsideration

pursuant to District Court of Maryland Local Rule 105.10

and Federal Rule of Civil Procedure 60 seeking

reconsideration of the entry of summary judgement. The

district court treated her motion as Rule 59(e) Motion to

Alter or Amend Judgement, and denied the motion.

Hemphill filed a timely pro se appeal. We have

jurisdiction over this appeal pursuant to 28 U.S.C. 1295

(a)(1).

DISCUSSION

I. Claim Construction

Hemphill argues that the district court improperly

construed claim 2 by “reading into” claim 2 “extraneous

limitations from the specification”, and by reading

limitations into claim 2 that relate to claiml. McNeil

responds that the district court properly looked to the

specification and prosecution history to construe claim 2.

32A

ees yh

Ria colantake shrubs Chas tpanlalee te des

We agree.

In interpreting Claims, a court “should look first to

the intrinsic evidence of record, i.e. the patent itself,

including the claims, the specification and, if in evidence

the prosecution history.” Vitronics Corp. y.

Conceptronic, Inc., 90 F3d. 1576, 1582, 39 USPQ2d 1573,

1576 (Fed. Cir. 1996). It is well-settled that for purposes

of claim construction, the specification may act as a sort

of dictionary that explains the invention and may define

terms used in claims. kman v. Westview

Inc., 52 F.3d. 967, 979, 34 USPQ2d 1321, 1330 (Fed. Cir.

1995) (en banc), afff'd., 517 U.S. 370 (1996). When the

meaning of a term used in a Claim is sufficiently clear

from its definition in the specification, that meaning shall

apply. ltiform Desiccants, Inc. v.M td., 133

F.3d. 1473, 1477, 45 USPQ2d 1429, 1432 (Fed. Cir.

1998). In this case, the district court properly looked to

the specification for clarification of several terms which

were not wholly defined in the claim language.

Similarly, the district court properly looked to the

Prosecution history of the ‘720 patent. Hemphill argues

that “the district court construed] the wrong....claim” by

reading into claim 2 limitations relating to claim 1. But

even where the prosecution history does not relate to the

particular claim at issue, it is Proper for the district court

to use that prosecution history to construe the Claim at

issue if the Prosecution history relates to the same

Structure as the asserted claim. Alpex Computer y.

33A

Nintendo Co., 102 F.3d. 1214, 1220 40 USPQ2d 1667,

1662 (Fed. Cir. 1996) (“[W]e discern no reason why

prosecution history relating to the structure of...claim lis

not pertinent to the same structure ...[in] claim 12 and

13".) It is well settled that “[p]rosecution. history is

relevant not only for purposes of prosecution history

estoppel but also for construing the meaning and scope of

the claims.” Id. At 1220, 40 USPQ2d at 1671. Thus, like

the specification, the prosecution history can act like a

dictionary, Hoechst Celanese Corp, v. BP Chems. Lid., 78

F.3d. 1575, 1578, 38 USPQ2d 1126, 1129 (Fed. Cir.

1996), cert. denied, 519 U.S. 911 (1996), and statements

made during reexamination proceedings “are relevant

prosecution history when interpreting claims.” E.L

DuPont de Nemours & Co. v, Phillips Petroleum Co., 849

F.2d. 1430, 1439 7USPQ2d 1129, 1136 (Fed. Cir. 1988),

cert, denied, 488 U.S. 986 (1988). In this case, in

construing claim 2, the district court relied on statements

Hemphill made during prosecution of the ‘720 patent in

which she narrowed her claims to overcome prior art. The

district court also relied on Hemphill’s statements,

described below, that she made during two reexamination

proceedings in which she further limited her claims to

convince the PTO to reissue them. The district court

properly relied on Hemphill’s statements made during

prosecution and during the reexamination proceedings,

even though some of those statements related to the

unasserted claim 1.

34A

er ate ot

The district court construed the term “swab” to

mean “a small piece of absorbent material attached to the

end of a stick or wire and used for cleansing or applying

medicine.” Hemphill, 134 F. Supp. 2d. At 727. (quoting

i i icti 1810 (3d ed. 1992).

Hemphill argues that the term “vaginal” does not limit her

invention to a swab meant for use inside the vaginal

cavity, but instead “pertains to the outer housing as a

cover or sheath”. We agree with the district court. After

determining that claim 2 “provides little guidance as to

the terms ‘vaginal’ and ‘swab,’ the district court found

that the “specification clarifies that [Hemphill] designed

the ‘vaginal swab’ to enter into the vaginal cavity”, and

that the “specification defines the purpose of the invention

as ‘a truly portable, convenient, and disposable internal

vaginal cleaning device or refresher.” Id. At 726. Thus,

the district court found that the specification limits the

term “vaginal” to a “swab entering into the vaginal canal.”

Id. The district court also found that Hemphill

distinguished her invention from prior art during

Prosecution by stating that the prior art lacked “an

elongated structure for the swabbing element to be

introduced into the vaginal cavity.” Id. The district court

accordingly precluded Hemphill from “claiming that her

invention is not meant to enter into the vaginal cavity,”

and construed the term “vaginal” to mean “ a swab

entering into the vaginal canal”. Id.

Finally, the district court relied on the following

35A

dictionary definitions to determine the plain meaning of

the term “swab”; American Heritage Dictionary, 1810 (3d

ed. 1992) (defining “swab” as [a] small piece of absorbent

material attached to the end of a stick or wire and used for

cleansing or applying medicine”); Dorland’s Medical

Dictionary 1617 (28" ed. 1994) (defining “swab” as “a

wad of cotton or other absorbent material firmly attached

to the end of a wire or stick, used for apply medication,

removing material, collecting bacteriological material,

etc.”). The fact that the PTO granted Hemphill’s request

for reexamination in light of a patent for wrapped sanitary

napkins (U.S. Patent No. 3,973,567) (the “Srininvasan”

patent) and reissued her patent over Srininvasan does not

alter the proper construction of the term “vaginal swab,”

and does not persuade us to construe the term “vaginal

swab” to cover wrapped sanitary napkins. We find that

the district court properly construed the term “vaginal

swab.”

Next, the district court construed the term “outer

housing” to require an outer housing that “functions as a

handle for the use of the swab,” and is “not designed to be

removed and thrown away”. Hemphill, 134 F. Supp. 2d

at 727. Specifically, the district court found that during

prosecution of the ‘720 patent, Hemphill distinguished her

invention from U.S. Patent No. 2,393,677 (the ‘677

patent), noting that her “outer housing” transformed into

a “handle structure”, a metamorphosis absent from the

invention of the ‘677 patent. Id. We find that the district

36A

we So eae

OnE ee ee a

. - ee ae

court properly construed the term “outer housing.”

The district court then construed 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.” Id. The district court

looked to Hemphill’s statements during prosecution of the

‘720 patent to determine that the purpose of the “annular

band” is “to keep Sticky fingers off the fibers,” and to

Possess “an outer diameter which is at least equal to the

inner diameter” of the band attached to the outer housing,

“so that the two can fit thereby allowing the core to be

secured within the band by a suitable adhesive.” Id. The

specification described the core member as “fairly rigid,”

and secured to the outer housing. Id. We find that the

district court properly construed the term “core member.”

We agree with McNeil that the district court

properly construed all terms of claim 2, as a matter of law.

Il. Infringement

Hemphill’s pro se appeal implicitly challenges ie

district court’s grant of summary judgement of

noninfrignement. To prove literal infringement, Hemphill

must establish that the Accused Products contain each and

every limitation of the asserted claim. See e.g., Maxwell

y. J. Baker, Inc., 86 F.3d. 1098, 1105, 39 USPQ2d. 1001,

1004 (Fed. Cir. 1996), cert. denied, 520 U.S. 1115 (1997).

Hemphill’s sole discernible argument regarding

infringement is based on an advertisement describing

certain features of the Accused Products. Hemphill, 134

37A

F. Supp. 2d. At 728. After comparing claim 2 to the

Accused Products, the district court found that the

limitations in claim 2 were not satisfied by the Accused

Products.

First, as noted above, the district court found that

the term “vaginal swab” limited the invention to “a small

piece of absorbent material attached to the end of a stick

or wire and used for cleansing or applying medicine,” and

meant to be used inside the vaginal canal. Id. At 727.

The district court found that the Accused Products are not

designed for use within the vaginal canal, and that a

sanitary napkin is neither the size nor shape to allow for

internal use. Id. At 728.

Second, as noted above, the district court found

that the term “outer housing” limited the invention to a

swab with a housing that “functions as a handle for the

use of the swab,” and is “not designed to be removed and

thrown away.” Id. At 727. The district court found that

the Accused Products lack an outer housing as required by

the ‘720 patent, and instead have an “outer wrapping that

is discarded once the sanitary napkin is utilized.” Id, At

728.

Finally, as noted above, the district court found

that the term “core member” required 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.” Id. At 727.

The district court found that the Accused Products lack

both a rigid core and an annular band. Id. At 728.

38A

1 eke tema

eT ET eee

We agree with the district court that no reasonable

jury could find that these limitations recited in claim 2 are

found in the Accused Products.

To prove infringement under the doctrine of

equivalents, Hemphill must show “equivalence” between

the elements of the Accused Products and the claimed

elements of the ‘720 patent, Warner-Jenkinson, Co. v.

Hilton Davis Chem, Co., 520 USS. 17, 21 (1997, by

Showing that the Accused Products “perform[ ]

substantially the same function in substantially the same

way to obtain the same result” as the claimed elements of

the ‘720 patent. Graver Tank & Mfg. Co. v. Linde Air

Prods. Co., 339 U.S. 605, 608 (1950). Noting that

Hemphill “failed to offer a single assertion illustrating

that the difference between the elements of her invention

and the accused devices is only insubstantial,” the district

court found that “no reasonable jury could find there to be

equivalence between the elements of [Hemphill’s]

invention and the accused devices.” Hemphill 134 F.

Supp. 2d, at 729. There are simply no genuine issues of

material fact regarding infringement, either literally or

under the doctrine of equivalents.

III._Motion for Reconsideration

Hemphill also argues that the district court

erroneously considered her Motion for reconsideration as

a Rule 59(e) Motion to Alter or Amend Judgement. We

do not understand how the district court’s treatment of her

motion as a motion under Rule 59(€) could possibly

39A

constitute prejudicial error. Because the district court’s

decision to treat the motion as a Rule 59(e) motion did not -

prejudice Hemphill, we need not further address this

issue, and we affirm the district court’s dismissal of

Hemphill’s motion.

CONCLUSION

Because the district court’s claim construction was

not legally erroneous, and its infringement analysis was

proper, the district court’s grant of summary judgement of

noninfrignement is

AFFIRMED.

ton) BAA Pam

Ge FF RAE lef ase) od CMA eb bb AS. De

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MARYLAND

ALLEGRA D. HEMPHILL

MCNEIL-PPC, INC.

Civil Action No. DKC 99-654

REHEARING

ORDER and MEMORANDUM OPINION

Date of Entry May 11, 2001

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MARYLAND

ALLEGRA D. HEMPHILL

MCNEIL-PPC, INC.

Civil Action No. DKC 99-654

ORDER

In accordance with the accompanying

Memorandum Opinion, IT IS this 1 1the day of May, 2001,

by the United States District Court for the District of

Maryland, ORDERED that:

l. Ms. Allegra Hemphill’s Motion for

Reconsideration BE, and the same IS, DENIED: and

2. The Clerk will transmit copies of the

Memorandum Opinion and this Order to Magistrate Judge

Day, to Plaintiff, and to counsel for the Defendant and

CLOSE this case.

/s/ DEBORAH K. CHASANOW

United States District Judge

41A

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MARYLAND

ALLEGRA D. HEMPHILL

MCNEIL-PPC, INC.

Civil Action No. DKC 99-654

MEMORANDUM OPINION

Presently pending is Plaintiff Allegra Hemphill’s

Motion for Reconsideration brought pursuant to Federal

Rule of Civil Procedure 60(b) and Local Rule 105.10.

Plaintiff, proceeding pro se, contests this court’s order

issued March 12, 2001. Paper No. 60. She primarily

asserts that this court erred in construing claim 2 of her

patent, United States Patent No. 4,557,720. The court

rejects this contention and stands by its prior ruling.

Accordingly, Plaintiff's Motion for Reconsideration shall

be DENIED.

Motions for reconsideration are typically treated as

Rule 59(e) motions to alter or amend judgement when

filed within ten days from entry of judgement and as a

Rule 60(b) motion if it is served more than ten days after

the court’s ruling. See Dove v. CODESCO, 569 F.3d.

807, 809 (4" Cir. 1978) (construing motion for

reconsideration asa Rule 59(e) motion because the motion

was served within ten days of entry of judgement and calls

into question the correctness of that judgement; In re

Burnley, 988 F.2d. 1,3,(4th Cir. 1992) (finding that a

motion for reconsideration not filed within ten days of the

42A

entry of judgement must be construed as a motion under

60(b) rather than 59(e). In the instant case, this court

entered judgement on March 12, 2001, and Plaintiff filed

this motion for reconsideration on March 20, 2001, well

within the ten day limit. Thus, it appears this motion is

governed by Rule 59(e) rather than Rule 60(b).:

The Fourth Circuit has identified three grounds for

amending a prior judgement pursuant to Rule 59(e):

1) to accommodate an intervening change in controlling

law; 2) to account for new evidence not available at trial;

or 3) to correct a clear error Or prevent manifest injustice.

E.E.0.C. y. Lockheed Martin Corp., 116 F.3d. 110, 112

(4" Cir 1997) (citing Hutchinson v. Staton 994 F .2d. 1076,

1081 (4" Cir. 1993)). It is undisputed there has been no

intervening change in the law and that no new evidence

has been set forth. Plaintiff s Primary contention is that

this court erred in construing her patent claim.

Claim construction is properly a matter of law

before the court. Markman v. Westview Instruments, Inc.

52 F.3d. 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517

U.S. 370 (1996). When construing a Claim, the court

examines “the claims themselves, the written description

> Even if the court construed this as a Rule 60(b) motion, it

would fail. Plaintiff fails to offer any evidence supporting a basis for

reconsideration as specified in Rule 60(b), such as mistake,

inadvertence, excusable neglect, newly discovered evidence, or fraud.

Fed. R. Civ. P. 60(b).

43A

portion of the specification, and the prosecution history.”

Bell & Howell Doc. Mgmt. Co. v. Altek Sys., 132 F. 3d.

701,705 (Fed. Cir. 1997), reh’g denied Jan. 6, 1998;

Vitronics Corp. v. Conceptronic, Inc., 90 F.3d. 1576,

1581-82 (Fed. Cir. 1996) (“The claims, specification, and

file history...constitute the public record of the patentee’s

claim, a record on which the public is entitled to rely.”).

In construing claim 2, this court followed this procedure

by looking at the claims themselves, the specification,,

and the prosecution history.

Plaintiff contends that the court did not look to the

words of the claim. However, this is simply not true as

evidenced in the court’s detailed opinion. Paper No. 60 at

14-18. Plaintiff also argues that the literal words of the

claim should be compared to the accused devices prior to

the court’s construction of the claim. Courts, however,

have been instructed first, to construe the claim and then,

to determine whether the claim reads on the accused

device. Markman, 52 F.3d. At 976. Thus, the court

properly construed the claim before comparing the claim

to the accused devices. °

° Moreover, Plaintiff's various arguments within her motion for

reconsideration directly contradict each other. For :xample, she begins

by asserting that the term “vaginal swab” was adeqtately defined within

the words of the claim itself. Paper No. 61 at 8. She then argues that a

different dictionary definition should have used in he determination of

the meaning of the term “vaginal swab”. Id. At 18. Finally, she claims

that the term “vaginal swab” is simply a title without its own significant

44A

Additionally, a motion for reconsideration that

merely revisits the same arguments already considered

and rejected should be denied. CNF Constructors, Inc. y.

Donohoe Constr. Co., 57 F.3d. 395, 400 (4% Cir. 1995)

(when “the motion seeks reconsideration of legal issues

already addressed in an earlier ruling there are no grounds

for relief); Jnt’/ Longhoremen’s Assoc., AFL-CIO y.

Cataneo Inc., 990 F.2d. 794, 801 (4" Cir. 1993) (denying

motion for reconsideration brought by party “rehashing”

the same arguments the court had rejected). Plaintiff's

motion, in large part, simply reiterates arguments this

court has addressed. Consequently, this court shall DENY

Plaintiff's motion for reconsideration and a separate Order

will be entered.

“s/

DEBORAH K. CHASANOW

j United States District Judge

: May 11, 2001.

meaning. Id. At 20.

45A

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MARYLAND

ALLEGRA D. HEMPHILL

MCN.:IL-PPC, INC.

Civil Action No. DKC 99-654

FACT FINDING

ORDER AND MEMORANDUM OPINION

Date of Entry March 12, 2001

iN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MARYLAND

ALLEGRA D. HEMPHILL

MCNEIL-PPC, INC.

Civil Action No. DKC 99-654

ORDER

For the reasons stated in the foregoing

Memorandum Opinion, it is this 12" day of March, 2001,

by the United States District Court for the District of

Maryland, ORDERED that:

1. Johnson & Johnson Consumer Companies,

Inc.’s Motion for Leave to Permissively Intervene BE, and

the same hereby IS, DENIED:

2. McNeil-PPC. Inc.’s Motion for Summary

Judgement BE, and the same hereby is GRANTED;

3. McNeil-PPC, Inc.’s Motion to Bifurcate BE,

and the same hereby IS, DENIED AS MOOT:

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4. JUDGEMENT BE, and the same hereby IS,

ENTERED in favor of Defendant, McNeil-PPC, Inc., and

against Plaintiff, Allegra Hemphill; and

5. The Clerk will transmit copies of the

Memorandum Opinion and this Order to Magistrate Judge

Day, to Plaintiff, and to counsel for the Defendant and

Proposed intervenor and CLOSE this case.

“s/

DEBORAH K. CHASANOW

United States District J udge

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MARYLAND

ALLEGRA D. HEMPHILL v. MCNEIL-PPC, INC.

a Civil Action No. DKC 99-654

¢ Date of Entry March 12, 2001

& MEMORANDUM OPINION

! Plaintiff Allegra Hemphill, proceeding pro se,

alleges that Defendant Johnson & Johnson, Inc. (Johnson

; and Johnson) manufactures and distributes products which

2 infringe on her patent, U.S. Patent 4,557,720 (“the ‘720

a patent”).' Presently pending and ready for resolution are

SE isto eee

three motions. Johnson & Johnson Consumer Companies,

' On February 14, 2000, this court ordered that McNeil-

PPC, Inc. (“McNeil”) replace Johnson & Johnson as party

defendant because McNeil is the entity responsible for the manufacture

and distribution of the Stayfree, Carefree, and Serenity products at issue

in this case. Paper No. 36.

Chee alin Carta gh aa bone ny p<

beac tosis dishes ch

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«REPOS ROA GAM

Inc. (JJCCI’”) has filed a Motion for Leave to Permissively

Intervene. Defendant McNeil has filed both a Motion for

Summary Judgement for Noninfringement and a Motion

to Bifurcate.? The issues are fully briefed and no hearing

is deemed necessary. Local Rule 105.6 For the following

reasons, the court shall deny JJCCI’s Motion for Leave to

Permissively Intervene and grant McNeil’s Motion for

Summary Judgement. °

I, Background

Ms. Hemphill filed her application for the ‘720

patent with the Patent and Trademarks Office (“PTO”) on

June 11, 1984, and her patent was subsequently issued on

December 10, 1985. Paper No. 46, Ex. D1. Bearing the

title “Vaginal Applicator”, the ‘720 patent describes a

disposable vaginal swab or refresher meant either to

cleanse or to treat the vaginal area with fragrances,

medications, germicides, or deodorants. Id., Col. 1, lines

33-38. The ‘720 Patent has two independent claims, but

only claim 2 is at issue in this litigation. Id., Ex. B.

Deposition of Allegra Hemphill (“Hemphill Depo”), 10.

The description contained in claim 2 of the Applicator is

2 The issue of non-infringement is the sole issue in McNeil’s

summary judgment motion because Defendant does not argue the

validity or unenforceability of Plaintiff's patent. Paper No. 57, 2 n.2.

> In light of this court’s decision to grant McNeil’s Motion for

Summary Judgement, Defendant’s Motion to Bifurcate is no longer

applicable, and thus, the motion will be denied as moot.

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as follows:

a vaginal swab comprising an outer housing

including an inner case member and an outer case

member at least part of which is connected to and

overlies inner case member;

a core member, at least one layer of porous

material secured to said core member, and housing

means for supporting and enclosing said core

member, said core member being secured to said

housing means, having at least two portions

movable relative to one another between first and

second positions for enclosing said core member

when in said first position and for both, exposing

said core member and the porous padding secured

thereto and for forming a handle for said swab

when in said second Position.

Id. Ex. D1, Col. 7-8, lines 1-10.

A. Prosecution of the ‘720 Patent.

During the prosecution phase, Plaintiff narrowed

her claims to distinguish her invention from prior art cited

by the Examiner. For example, Plaintiff clarified the

distinction between her invention and a patent awarded to

M. Alvarez by <plaining that:

[t]he Alvarez device does not allow for an

elongated structure for the swabbing element to be

introduced into the vaginal cavity nor does it provide a

sufficient handle structure. Id., Ex. D10, PTO 00313. She

also differentiated between the porous material specified

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in the respective patents.

Alvarez teaches that a moisture absorbent layer is

exposed after the protective covering is removed. There is

a distinct difference between Absorbent and Adsorbent, to

ab as in Alvarez, absorb is to take in, suck up, swallow,

engross wholly, to take up or receive by chemical or

actions as of gases or liquids, and to ad as in Hemphili to

adsorb is to take up and hold, to gather gas or liquid or

dissolved material on a surface. |

Id., Ex. D6, PTO 000336 (emphasis added).

Additionally, Plaintiff distinguished the “housing”

in her invention from the “housing” in the patent issued to

Albert Gelardin for a Cosmetic Holder. Plaintiff noted:

{t]he Hemphill device, after removing the outer

housing serves as a handle structure, and still

serves as a function for the device, unlike Gelardin

that states that the cover is completely removed.

Id., Ex. D6 PTO 00342.

B. Reexamination of the ‘720 patent

On February 2, 1998, Plaintiff as.ccd the PTO to re-

examine her patent in light of the McNair patent

(“McNair”) for a Sanitary Napkin with wings. The

description of the McNair patent states as follows:

The central element and side elements have fluid-

impervious backing upon which is placed a thin layer

adhesive which will not penetrate the absorbent materials

placed thereon. The central element has a highly

absorptive pad means whereas the absorptive means on

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the side panels may be minimal. The backing element of

the central portion of the invention contains a strip of

adhesive covered by a protective tape until use.

Id., ex. E2, AH 0222. Plaintiff differentiated her

invention from McNair by stating that “Hemphill [vaginal

swab] improves absorbing on the McNair cover sheet

because of an absorbency characteristic”. Id., Ex. El, AH

0230. Thus, the McNair patent required an absorbent

porous sheet, whereas Plaintiff's patent specified

adsorbent porous material.

Ultimately, the PTO denied Plaintiff's request for

reexamination after finding that McNair patent “did not

raise a substantial new question of patent ability.” Id., E4,

AH 0227. Specifically, the PTO stated that the McNair

patent “discloses none of the Structural features recited

(on Plaintiffs claims)” in light of Plaintiffs invention

having a particular core member and housing. Id.

Plaintiff also applied for reexamination of her

patent on May 20, 1998, this time Over a patent held by

Srininvasan et al. Id., Ex. F2, U.S. Letters Patent No.

3,973,567 (“the Srininvasan patent). The Srininvasan

patent describes a “wrapped” Sanitary napkins that

includes plastic outer packaging and a napkin that affixes

to an undergarment using adhesive. The patent contains

this description of the invention:

A sanitary napkin having an adhesive element

thereon for attaching to an undergarment is

provided with means for protecting the napkin and

SIA

the adhesive element prior to use and for disposing

of the napkin after use. The means comprise

providing the napkin with a wrapper sheet of

flexible material overlying one major surface, and

the sides of the napkin and at least partially

overlapping on the second maior surface of the

napkin. The sheet is releasably adhered to and

held in place by the adhesive element.

Id., Ex. Fl, PTO 00509.

The PTO granted Plaintiff's request for

reexamination, finding that “[a] substantial new question

of patent ability affecting Claim 2" was raised by the

Srininvasan patent. Id., Ex. F3, PTO 00481. Agreeing to

compare claim 2 and the Srininvasan patent more closely,

the PTO acknowledged the possibility that Srininvasan

had the claimed structure, such as “a core member

surrounded by a layer of porous material, an outer

housing, and housing means with 2 positions (one position

that protects the core member and another position that

exposes the core member for use).” Id.

In an effort to get her claim reissued, Plaintiff

stated the Srininvasan patent lacked both the “housing

means” and “a band” at the base of the core member,

found in her invention. Id., Ex. F4, PTO 00484. Plaintiff

emphasized that the missing band was particularly

significant to her invention because “[t]he band is the

means or intermediary in both positions from the closed

location to the open state”, Id., Ex. F4, PTO 00486

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(emphasis in original), allowing users “to keep sticky

fingers off the fibers.” Id., Ex. F2, PTO 00447.

Furthermore, Plaintiff distinguished her vaginal swab by

Stating : [i]t should be well understood that Hemphill

does not behave, operate or function like a Sanitary

napkin. Srininvasan does not have the components or

parts to be a vaginal swab. Id., Ex. F2, PTO 00451.

(emphasis in ori ginal.)

On January 26, 1999, the PTO issued a

reexamination certificate for the ‘720 Patent over

Srininvasan for the following reasons:

Claim i of the patent to Hemphill (4557720) is

considered patent able over the patent to

Srininvasan, et al. (3973567) because Srininvasan

simply does not disclose the claimed structure,

such as an open end Opposite a closed end, an

annular band, and frangible seams.

Claim 2 of the patent to Hemphill (4557720) is

considered patent able over the patent to

- Srininvasan, et al. (3973567) because Srininvasan

does not disclose the housing means of Hemphill

and does not disclose a structure that could be

considered equivalent to housing means of -

Hemphill. Id., Ex. F f, PTO 00490.

According to Defendant, beginning in 1994 and

continuing for the next four years, Plaintiff sent letters to

Johnson & Johnson executives alleging that the

company’s sanitary and adult napkins incorporate her

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patented technology. Specifically, Plaintiff has alleged

that the Stayfree sanitary napkin, Carefree sanitary napkin

, and Serenity adult napkin product lines infringe upon her

patent.‘ Moreover, Plaintiff testified that she considers

these respective product lines to be structurally equivalent

to each other. Id., Ex. B, 363, 368, 372-74, 376077.

Defendant agrees that the three different product

lines are nearly identical in design. Id., Ex. A, McCoy

Decl., 95. Defendant has provided the following

undisputed description of these products: :

The Accused Napkins are sold in multiple units in

large plastic bags, inside of which are individual

napkins packaged in plastic wrappers. (Ex. A,

McCoy., 96). Each of these individual units is

composed of absorbent material with a flexible

thin porous membrane that is attached on one side

to a flexible plastic sheet that has as adhesive on

the other side. Id., ¥ 7. In its packaging, the side of

the plastic sheet containing the adhesive is

attached to a thin paper sheet. Id.,§ 7. In order to

use the napkin, the consumer removes the plastic

packaging, and peels off the thin paper sheet. Id,

9. Then the consumer presses the side with the

* Although Plaintiff mentions in her deposition testimony that

Band Aid brand adhesive bandage products also infringe upon her

patent, she never actually argues this contention. This court construes

Plaintiff's complaint as limited to products from the Stayfree, Carefree,

and Serenity product lines.

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adhesive element to the undergarment in order to

attach the napkin to the undergarment. Id. The

napkin is intended to passively collect fluid during

use. Id., 910. After use, the consumer pulls on the

napkin and then discards it, either directly or by

first inserting the napkin into the plastic wrapper

of the next napkin. Id., 911. The Accused

Napkins are not designed to be used or placed

internally in the vagina. Id.,912. They do not have

handles, and do not have adsorbent material. Id., q

13. Paper No. 46, 5.

IT. Motion to Intervene

JJCCI has filed a motion for leave to permissively

intervene pursuant to Rule 24(b). See Fed. R. Civ. P.

24(b). In October 1999 at her deposition, Plaintiff

Suggested that Band-Aid brand adhesive bandage products

may also infringe upon her patent. These bandages are

manufactured and/or distributed by JJCCI, another

subsidiary of Johnson & Johnson, not by McNeil- the

Current party Defendant.

- JICCI’s ion for Leave to Permissivel

Intervene

Rule 24(b) (2) provides, in pertinent part:

Upon timely application anyone may be permitted

to intervene in an action...when an applicant’s

claim or defense and the main action have a

question of law or fact in common...In exercising

its discretion, the court shall consider whether the

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intervention will unduly delay or prejudice the

adjudication of the rights of the original parties.

Fed. R.Civ. P. 24(b)(2). Thus, permissive intervention is

appropriate in circumstances in which 1) the applicant is

timely; 2) the moving party’s claim or defense and the

main action have a common question of law or fact; and

3) the proposed intervention will not unduly delay or

prejudice the adjudication of the original parties’ rights.

Hill v. W. Electronic Co., 672 F2d. 381, 386 (4® Cir.

1982); 6 James Wm. Moore et al. Moore’s federal

Practice § 24.10 (3ed. 1997).

B. Analysis.

Although Plaintiff identified Band Aid brand adhesive

bandages at her deposition taken October 18, 1999 as a

product line allegedly infringing upon her patent, she

never made this assertion again. Paper No. 53. Exhibit A,

Hemphill Depo., 375-376. In fact, both Plaintiff's

response to JJCI’s motion for leave to permissively

intervene and her opposition memorandum to McNeil’s

motion for summary judgement contains assertions that

Stayfree, Carefree and Serenity product lines are the sole

product lines she is litigating in this lawsuit. Paper NO.

48 at 5, Paper No. 55 at 1. Plaintiff does not assert that

Band Aid products are within the identified accused

products in her complaint or in any or her papers, thus,

this court will not force her to litigate an issue she has not

asserted.

Moreover, JJCI provides absolutely no explanation

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for the eight month time lapse between receiving notice

through Plaintiff's deposition testimony in October 1999

and filing the motion in May 2000. Plaintiff also asserts

that JJCI’s motion is untimely, particularly, in light of

discovery closing on March 13, 2000. Thus, the court

shall deny JJCI’s motion for leave to permissively

intervene.

II. McNeil-s Motion for Summary Judgement

A. Summary Judgement Standard

In patent cases, as well as in other Cases, a motion for

summary judgement will be granted only if there exists no

genuine issue as to any material fact and the moving party

is entitled to judgement as a matter of law. Fed. R. Civ.

P. 56(c); Anderson vy. Liberty Lobby, Inc., 477 U.S. 242,

250 (1986); Celotex Corp. v. Catrett, 477 U.S. 317, 322

(1986): Clark vy. Alexander, 85 F.3d. 146, 150 (4" Cir.

1996). The moving party bears the burden of showing

that there is no genuine issue of material fact. Fed. R.Civ.

P. 56(c); Pulliam 810 F.2d. At 1286 (citing Charbonnages

de France v. Smith 597 F.2d. 406, 414 (4" Cir. 1979)).

When ruling on a motion for summary judgement,

the court must draw all reasonable inferences in favor of

and construe the facts in the light most favorable to the

non-moving party. Tinsley v. First Union Nat ‘l Bank, 155

F. 3d. 435, 437 (4 Cir. 1998). A properly supported

motion for summary judgement may not be defeated by

“the mee existence of some alleged factual dispute

between the parties.” Anderson, 477 U.S. at 247-48.

STA

Further, while the court is charged with liberally

construing a complaint filed by a pro se litigant to allow

the development of a potentially meritorious case, the

requirement of liberal construction does not mean that the

court can assume the existence of a genuine issue of

material fact where none exists. Weller v. Dep’t of Social

Services, 901 F.2d. 387, 391 (4" Cir. 1990): Beaudett v.

City of Hampton, 775 F.2d. 1274, 1277 (4" Cir 1985).

Although an infringement analysis usually

involves both questions of fact and law, summary

judgement of noninfringement may still be proper. Nike

Inc., v. Wolverine Worldwide Inc. 43 F.3d. 644, 646 (Fed.

Cir. 1994); Chemical Eng’g Corp. v. Essef Indus. Inc.,

795 F2d. 1565, 1571 (Fed. Cir. 1986). A good faith

dispute about the meaning and scope of asserted claims

does not, in and of itself, create a genuine dispute to

preclude summary judgement in patent cases. Lantech,

Inc. v. Kelp Mach. Co., 32 F. 3d. 542, 546 (Fed. Cir.

1994).

B. Analysis

Plaintiff alleges that McNeil’s Stayfree, Carefree

and Serenity product lines literally infringe her ‘720

patent. Defendant objects to this characterization by

stating that the original design for these products existed

prior to Hemphill’s patent and that these products vary in

both design and purpose compared to Hemphill’s vaginal

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applicator. *

In order to assess this motion, the court must

engage in a two-step infringement analysis. “The first

step is determining the meaning and scope of the patent

claims asserted to be infringed. The second step is

comparing the properly construed claims to the device

accused of infringing.” | Markman v. Westview

Instruments, Inc., 52 F.3d. 967, 979 (Fed, Cir. 1995) (en

banc), aff'd, 517 U.S. 370 (1996). Claim construction is

correctly a matter of law for the court to decide. Id. When

construing a claim, a court should look to the intrinsic

evidence, i.e., the patent itself, its claims, written

description and the prosecution history. Vitronics Corp.

v. Conceptronic, Inc., 90 F.3d. 1576, 1582 (Fed. Cir

1996). Additionally, statements made during the reissue

[reexamination] proceeding “are relevant prosecution

history when interpreting claims,” E.J. DuPont de

Nemours & Co. v. Phillips Petroleum Co., 849 F.2d. 1430,

1439 (Fed. Cir. 1988).

* Defendant asserts that all of the accused products arise from

a Stayfree sanitary napkin sold in 1981, prior to the existence of the ‘720

patent. See Paper No. 46. Exhibit L, Stayfree Sanitary Napkin

Manufacturing Specifications. Plaintiff, however, contends that the

design of these accused products changed after she sent samples of her

patented invention to Defendant ’s parent company in an attempt to

distribute her product commercially. Without reaching the question of

whether the accused products were sold in the same form prior to the «

filing of the "720 patent, this court will analyze whether the products in

their present form infringe Plaintiff's ‘720 patent.

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1. Claim Construction

Claim construction begins with the words of the

claim. Bell Comm. Research, Inc. v. Vitalink Comm.

Corp., 55 F.3d. 615, 619-620. (Fed. Cir. 1995).

Moreover, claim terms are given their plain meaning

unless the inventor , “choosing to be his or her own

lexicographer,” uses terms in a manner other than their

ordinary meaning and clearly discloses these special or

alternative meanings in the patent specification or file

history. Vitronics, 90 F.3d. At 1582; Beachwood v.

Wilezwood Creative Products, Inc., 31 F.3d 1154, 1158

(Fed. Cir. 1994). Courts may rely on dictionary

definitions when construing claim terms “so long as the

dictionary definition does not contradict any definition

found or ascertained by a reading of the patent

documents.” Vitronics, 90 F.3d. At 1582.

The parties agree that only claim 2 of the ‘720

patent is at issue. Claim 2 provides in pertinent part as

follows:

A vaginal swab comprising an outer housing

including an inner case member and outer case

member at least part of which is connected to and

overlies inner case member;

a core member at least one layer of porous

material secured to said core member, and housing

means for supporting and enclosing said core

member, said core member being secured to said

housing means, having at lest two portions

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movable relative to one another between first and

second positions for enclosing said core member

when in said first position and for both exposing

Said core member and the said porous padding

secured thereto and for forming a handle for said

swab when in said second position.

Plaintiff has specifically identified the four component

parts to the vaginal swab as : 1) outer housing; 2) core

member, 3) at least one layer of porous material; and 4) a

housing means. Paper No. 46, Ex. G.

a. Vagina Swab

Plaintiff asserts that the term “vaginal” refers to

the outer housing as the cover or sheath, and, “swab”

refers to the unit being used as either a swab to dry or

absorb or an applicator to hold or apply treatment. Paper

No. 55, 3. By contrast, Defendant offers a narrower

definition that a “vaginal swab” is a stick Or wire with a

small piece of absorbent material attached the end of it,

which is of a size and structure for cleansing or applying

medicine within the vaginal canal.

While the claim provides little guidance as to the

terms “vaginal” and “swab”, the ‘720 patent specification

clarifies that Plaintiff designed the “vaginal swab” to enter

into the vaginal cavity. For an example, the specification

defines the purpose of the invention as “a truly portable,

convenient, and disposable internal vaginal cleansing

device or refreshner.” Paper No. 46, Exhibit F 1, Col. 1,

lines 46-48. Moreover, the invention in the ‘720 Patent is

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designed to dry or absorb material in the internal vaginal

area. Id., Col. 3, lines 5-6. In fact, the length of the

average vaginal cavity establishes the approximate length

of the swab, including the core and gauze material. Id.,

Col. 3, lines 50-54. From the prosecution history,

Plaintiff also distinguished her invention on this particular

point by statement that the invention Alvarez lacked “an

elongated structure for the swabbing element to be

introduced into the vaginal cavity.” Id., Ex. D10, PTO

00313.

In the face of all of this evidence, Plaintiff will not

be allowed to claim that her invention is not meant to

enter into the vaginal cavity. After all, “a patentee may

not construe a claim term one way during prosecution in

order to obtain allowances of the patent and then in a

different way during litigation in order to obtain a finding

of infringement.” Knorr Bremse Systeme Fuer

Nutzfahrzeuge GMBH v. Dana Corp., No. CIV. A. 00-

803-A, 2001 WL 179815m at 4 *4 (E. D. Va. 2001) citing

Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d.

157-, 1579 (fed. Cir. 1995). Thus, the ‘720 patent limits

the term “vaginal” to a swab entering into the vaginal

canal.

As for “swab”, the ‘720 patent states that a vaginal

swab should preferably be “comprised of fairly rigid core

member constructed either in segments of as a one piece

unit, over which a thick gauze type absorbent pad or layer

is secured”. Paper Nol. 46, Ex. D1, Col. 2, lines 5-9. The

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plain meaning of the term “swab” is “a small piece of

absorbent material attached to the end of a stick or wire

and used for cleansing or applying medicine.” American

Heritage Dictionary 1810 (3d.ed. 1992): Dorland’s

Medical Dictionary 1617 (28" ed. 1994).

B. Outer Housing & Housing Means

Plaintiff asserts that “outer housing” is the

“packaging that protects [the swab] from danger, risk or

loss in an enclosing or protecting relationship and the

“housing means” is a part of the outer housing. Paper No.

55, 2. In claim 2, she states that the outer housing must

have “an inner case member and an outer case member,”

must be secured to the core member and must have at least

two portions movable relative to one another.” Paper No.

46, D1, Col. 7-8, line 1-10. Moreover, the ‘720 Patent

specification states that the “outer housing” is comprised

of “an external cover, an internal tubular member, and

rotatable base.” Id., Col. 1 lines 19-22. During the

Prosecution process. Plaintiff, further clarified the housing

structure in order to distinguish her invention from

Gelardin’s patent. She explained:

[t]he Hemphill device, after removing the outer

housing serves as handle structure, and still serves

as a function for the device, unlike Gelardin...that

States that the cover is completely removed.

Thus, the outer housing is not designed to be removed and _

thrown away but actually functions as a handle for the use

of the swab. Plaintiff's suggestion that the outer housing

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is only equivalent to protective packaging is clearly at

odds with both the terms of the patent as well as the

Plaintiff's own assertions during the prosecution phase.

C. Core Member

Plaintiff claims that having an accused device with

a core member, whether flexible or rigid, is enough to

infringe upon her patent. However, according to the’720

patent specifications, the core member should be fairly

rigid, Id. , Col. 7, lines 10, and have an “annular band or

ring” at the base, Id., Col. 5, lines, 31 - 33. Furthermore,

the core member is secured to the outer housing “can be

formed either as a solid structure preferably with a hollow

interior.” Id., Col. 5, lines 33-35. The purpose of the

“annular band” is two-fold: 1) “to keep sticky fingers off

the fiber,” Id., Ex. F2. PTO 00447, and 2) to possess “an

outer diameter which is at least equal to the inner diameter

of the band attached to the outer housing, “so that the two

can fit thereby allowing the core to be secured within the

band by a suitable adhesive.” Id., Ex. D1, Col. 5, line 45-

48. Thus, consistent with the patent specifications, claim

2 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.

D. Layer of porous material

Plaintiff identified the layer of porous material as

a critical element of her invention. Paper No. 46, Ex. G.

In prior documentation, including the patent itself,

Plaintiff provided a much more specific definition for the

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layer of porous material. In fact, the ‘720 patent

specification dictates that the porous material should be

“secured about the exterior surface [the] core.” Id., Ex.

D1, Col. 5, line 35-37. Moreover, the porous material

should be a “thick gauze type adsorbent pad or layer.” Id.,

Col. 2, lines 7-8. During the reexamination proceedings,

Plaintiff emphasized that the absorbency of her invention

distinguished it from McNair’s absorbent invention. Id.,

Ex. El, AH 0229 (“Hemphill improves absorbing on the

McNair cover sheet because of an absorbency

characteristic”). According to the patent specification and

Plaintiff's previous assertions, the porous material should

be secured to the exterior surface of the core member and

be composed of adsorbent material.

2. Comparison to Accused Device

After the claims are prorerly construed, then the

terms “must be compared to the accused device or

process,” Carroll Touch Inc., v. Electro Mechanical

Systems, Inc 15 F. 3d, 1573, 1576 (Fed. Cir. 1993). “In

order for there to be infringement, each and every

limitation set forth in a patent claim must be found in the

accused device, either literally or doctrine of equivalents.”

Bell Atlantic Network Services v. Covad Comm. Group,

Inc. 92 F.Supp. 2d. 483, 498 (E.D. Va. 2000) (citing

Lemelson vy. United States, 752 F2d. 1538,1551 (Fed. Cir.

19985)).

a. Literal Infringement

Plaintiff offers an advertisement for the accused

6S5A

devices as evidence the Defendant has literally infringed

her patent. The advertisement contains these assertions :

1) “an absorbent core pulls fluid-in and locks it away”,

and 2) “the silky clean cover draws fluid away and helps

keep it below the surface to help you feel clean and dry.”

Paper No. 52, Ex.2. Despite Plaintiff's attempts to

portray the elements of her invention in a manner to the

quoted advertisement she is unable to prove that each

element of her patented invention can be found in the

accused devices. A claim of literal infringement requires

proof that the accused devices meet every limitation of the

properly construed claims, Gentry Gallery, Inc. v.

Berkline Corp., 134 F. 3d. 1473, 1476 (Fed. Cir. 1998).

“If even one limitation is missing and not met as claimed,

there is no literal infringement. Mas-Hamilton Group v.

LaGard, Inc., 156 F3d. 1206 , 1211 (Fed. Cir. 1998).

First, and foremost, Plaintiff has stated that her

vaginal swab does not resemble, behave or function like

a sanitary napkin. Each of the accused products is a type

of sanitary napkin which lacks the rigid core required in

a swab and is not designed for use within the vaginal

canal. The accused products are designed “to cover a

substantial portion of an undergarment in order to

passively collect fluid that flows onto them.” Paper No.

46 Ex. B, 9 12.

Second, the structure of Plaintiff's invention

differs vastly from the accused devices on each element.

Plaintiff's vaginal swab is comprised of an outer housing

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structure that encloses a core member in first position and

exposes the core.menohes.and.fprasa handle.foruhaevehie

in the second position. The accused devices has an outer

wrapping that is discarded once the sanitary napkin is

utilized. At most, the discarded wrapper covers the used

and soon- to- be discarded napkin. The protective

packaging of the accused devices is in no way equivalent

to the handle function of the “outer housing” in Plaintiff s

invention.

Moreover, Plaintiff asserts that because the

accused products have a core pad, they infringe upon her

invention. However, the ‘720 patent clearly specifies that

the core member be “fairly rigid” and have an annular

band at its base that can fit into the band of the outer

housing. The accused products do not have such a

structure.

Finally, Plaintiff went to great lengths during the

reexamination phase to distinguish the absorbency

characteristics of the porous material used in her invention

versus the absorbency characteristic of the McNair patent.

Plaintiff, herself asserts that McNeil’s products have an

absorbent core yet, offers absolutely no explanation as to

_ how the porous material can possibly be the same between

Plaintiff's invention and the accused devices.

Accordingly, Plaintiff has failed to establish that the

accused products literally infringe upon her ‘720 patent.

67A

B. Doctrine of Equivalents

" Under’ tifis “a6ttrific, "a provat Wiilu W6es 051

literally infringe upon the express terms of a patent may

nonetheless infringe if there is “equivalence” between the

elements of the accused products and the claimed

elements of the patent. Zelinski v. Brunswick Corp., 185

F3d. 1311, 1316 (Fed. Cir. 1999) (citing Warner-

Jenkinson, Inc. v, Hilton Davis Chem Co. 520 U.S. 17, 21,

(1997)). Infringement occurs under this doctrine or

equivalents if the difference between the particular

element and the claim limitation are “insubstantial”. Id.

A test to determine “insubstantially” is whether “the

element performs substantially the same function in

substantially the same way to obtain substantially the

same result as the claim limitation.” Id. At 1316-1317

(citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,

339 U.S. 605, 608 (1950).

Once again, Plaintiff has admitted that her

invention, a vaginal swab, “does not look or behave like

a sanitary napkin” or even “function like a sanitary

napkin” Paper No. 46, Ex. E3, AH 0245. Moreover,

Plaintiff has failed to offer a single assertion illustrating

that the difference between the elements of her invention

and the accused devices is only insubstantial. Rather, the

evidence establishes the difference is vast. Accordingly,

the court shall find that no reasonable jury could find

there to be equivalence between the elements of Plaintiff's

invention and the accused devices.

68A

IV. Conclusion

Fau.the foregoing reasons, this court shall GRANT

MeNeil’s Motion for Summary J udgement for

noninfrignement.

A separate Order will be entered .

/s/DEBORAH K. CHASANOW

United States District Judge

March 12, 2001. -

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MARYLAND

ALLEGRA D. HEMPHILL v. JOHNSON & JOHNSON

Civil Action No. DKC 99-654

Date of Entry February 11, 2000

Filed: February 14, 2000

MEMORANDUM OPINION AND ORDER

Plaintiff, proceeding pro se, brought suit against

Johnson & Johnson, Inc., for patent infringement.

Johnson & Johnson seeks to have the appropriate wholly

owned subsidiary, McNeil- PPC, Inc., substituted as the

correct defendant. Plaintiffs opposition does not suggest

any proper reason to refuse this request. McNeil-PPC,

Inc. will be represented by the same counsel, and the case

will remain in the same posture it is in now, with the only

change being that the correct corporate entity will be the

official defendant. Accordingly, it is this 11% day of

February, 2000, by the United States District Court for the

District of Maryland, ORDERED that:

69A

1. Defendant’s motion to substitute BE, and the

same hereby IS, GRANTED;

2. Johnson & Johnson, inc. is replaced by McNeil-

PPC, Inc. as the party defendant; and

3. The Clerk will transmit a copy of this order to

Plaintiff and to counsel for the Defendant.

/S/DEBORAH K.. CHASANOW

United States District Judge

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MARYLAND

ALLEGRA D. HEMPHILL v. THE PROCTER &

GAMBLE COMPANY, et al.

Civil Action No. DK.C 2002-3736

Date of Entry February 12, 2003

ORDER TO SHOW CAUSE

Defendants have filed a Motion to Stay Discovery

Pending Resolution of the Summary Judgement motion.

Accordingly, IT IS this 12" day of February, 2003, by the

United States District Court for the District of Maryland,

ORDERED that:

1. Plaintiff Show Cause by no later that February

19, 2003, why the Motion to Stay should not be granted;

and

2. The Clerk wii. transmit a copy of this Order to

plaintiff and counsel for Defendants.

/s)DEBORAH K. CHASANOW

T0A

United States District Judge.

C/M

2/12/03mim

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MARYLAND

SOUTHERN DIVISION

ALLEGRA D. HEMPHILL v. PROCTER & GAMBLE

COMPANY and KIMBERLY-CLARK CORPORATION

Civil Action No. DKC 2002-3736

Date of Entry February 21, 2003

ORDER

The Court, having reviewed Defendants’ Joint

Motion to Stay Discovery Pending Resolution of

Summary Judgement Motions, and-any there being no

Opposition thereto, it is this 21 day of February, 2003,

ORDERED AND ADJUDGED:

1. Defendants’ Joint Motion to Stay Discovery

Pending Resolution of Summary Judgement Motions is

hereby GRANTED; and

2. The Clerk sha!l mail copies of the Order to all

counsel of record and to the Pre <e Plaintiff.

/s/Ho.n Deborah K. Chasanow

United States District Judge

District of Maryland, Southern Division

c/m

2/21/03 30cl

T1A

United States Court of Appeals for the Federal Circuit :

03-1463

ALLEGRA D. HEMPHILL, Plaintiff-Appellant,

PROCTER & GAMBLE CO., Defendant-Appellee,

KIMBERLY-CLARK CORPORATION

Defendant-Appellee.

COMBINED PANEL REHEARING

AND REHEARING EN BANC DENIED

Dated: February 23, 2004

Before RADER, BRYSON, and GAJARSA, Circuit

Judges. RADER, Circuit Judge.

United States Court of Appeals for the Federal Circuit

03 -1463

ALLEGRA D. HEMPHILL, Plaintiff-Appellant,

PROCTER & GAMBLE CO., Defendant-Appellee,

KIMBERLY-CLARK CORPORATION

Defendant-Appellee.

ORDER

A combined petition for panel rehearing and for

rehearing en banc having been filed by the APPELLANT,

and the petition for rehearing having been referred to the

72A

panel that heard the appeal, and thereafter the petition for

rehearing en banc having been referred to the circuit

judges who are in regular active service,

UPON CONSIDERATION THEREOF, it is

ORDERED, that the petition for panel rehearing be, and

the same hereby is, DENIED and it is further

ORDERED that the petition for rehearing en banc be, and

the same hereby is, DENIED.

The mandate of the court will issue on March 1, 2004.

Circuit Judge Schall did not participate in the vote.

FOR THE COURT,

/s/

Jan Horbaly, Clerk

Dated: February 23, 2004

cc. Allegra D. Hemphill

Kenneth R. Adamo, V. Bryan Medlock Jr.

Filed U.S. COURT OF APPEALS FOR THE F EDERAL

CIRCUIT FEB. 23, 2004

HEMPHILL V. PROCTER & Gamble, 03-1463

(DCT -02-CV-3736)

Note: Pursuant to Fed. Cir. R. 47.6, this order is not

citable as precedent. It is a public record.

73A

STATUTES: TITLE 35 UNITED STATES CODE

35 U.S.C. §102

35 U.S.C. §103

35 U.S.C. §112

35 U.S.C. §131

35 U.S.C. §132

35 U.S.C.§ 307

35 U.S.C. §102 . Conditions for patent ability; novelty

and loss of right to patent

A person shall be entitled to a patent unless —

(a) the invention was known or used by others in this

country, or patented or described in a printed publication

in this or a foreign country, before the invention thereof

by the applicant for patent, or

(b) the invention was patented or described in a printed

publication in this or a foreign country or in public use or

on sale in this country, more than one year prior to the

date of the application for patent in the United States, or

(d) the invention was first patented or caused to be

patented by the applicant or his for her] legal

representatives or assigns in a foreign country prior to the

date of application for patent in this country on a

application filed more that twelve months before the filing

of the application in the United States, or

(e) the invention was described in a patent granted on an

application for patent by another filed in the United States

before the invention thereof by the applicant for patent, or

T4A

(f) he [or she] did not himself {or herself] invent the

subject matter sought to be patented, or

(g) before the applicant’s invention thereof the invention

was made in this country by another who had not

abandoned, suppressed, or concealed it. In determining

priority of invention there shall be considered not only the

respective dates of conception and reduction to practice of

the invention, but also the reasonable diligence of one

who was first to conceive and last to reduce to practice,

from a time prior to conception by the other. (R.S. 4886,

4887, 4923: 35 U.S.C., 1946 ed., 31 32, 72).

Notes- Section 4(b) of the Act of July 19, 1952

provides:

“Section 102(d) of title 35, as enacted by section 1 hereof,

shall not apply to existing patents and pending

applications, but the law previously in effect, namely the

first paragraph of R.S. 4887 (U.S. Code, title 35, sec. 32,

first paragraph, 1946 ed.), shall apply to such patents and

applications.”

Section 4(d) of the Act of July 19, 1952 provides:

“The period of one year specified in section 102(b)

of Title 35 as enacted by section 1 hereof shall not apply

in the case of applications filed before August 1940, and

patents granted on such applications, and with respect to

such applications and patents, said period is two years

instead of one year.”

TSA

35 U.S.C.§ 103 . Conditions for patent ability’ non-

obvious subject matter

A patent may not be obtained though the invention

is not identically disclosed or described as set forth in

section 102 of this title, if the differences between the

subject matter sough to be patented and the prior art are

such that the subject matter as a whole would have been

obvious at the time the invention was made to a person

having ordinary skill in the art to which said subject

matter pertains. Patent ability shall not be negatived by

the manner in which the invention was made.

35 U.S.C. §112 Specification:

The specification shall contain a _ written

description

of the invention, and of the manner and process of making

and using it, in such full, clear, concise, and exact terms

as to enable any person skilled in the art to which it

pertains, or with which it is most nearly connected, to

make and use the same, and shall set forth the best mode

contemplated by the inventor of carrying out his [or her]

invention.

The specification shall conclude with one or more

claims particularly pointing out and distinctly claiming the

subject matter which the applicant regards as his [or her]

invention.

An element in a claim for combination may be

expressed as a means or step for performing a specified

function without the recital of structure, material, or acts

76A

in support thereof, and such claim shall be construed to

cover the corresponding structure, material, or acts

described in the specification and equivalents thereof.

(R.S. 4888; 35 U.S.C., 1946 ed., 33.).

35 U.S.C.§§131 . Examination of application.

The Commissioner shall cause an examination to

be made of the application and the alleged new invention;

and if on such examination it appears that the applicant is

entitled to a patent under the law, the Commissioner shall

issue a patent therefore.

35 U.S.C.§132. Notice of rejection; reexamination

Whenever, on examination, any claim for a patent

is rejected, or any objection or requirement made, the

Commissioner shall notify the applicant thereof, stating

the reasons for such rejection, or objection or requirement,

together with such information of the propriety of

continuing the prosecution of his (or her] application; and

if after receiving such notice, the applicant persists in his

[or her] claim for a patent, with or without amendment,

the application shall be reexamined. No amendment shall

introduce new matter into the disclosure of the invention.

(R.S. 4903; 35 U.S.C., 1946 ed., 51).

CODE OF FEDERAL REGULATIONS

Under 37 C.F.R. 1.121, an amendment made in the

United States Patent and Trademarks Office is a_formal

process. The [p]roper claim amendment format is shown

in the Manual of Patent Examining Procedure 2250:

“Manner of making amendments.” See MPEP 1.530

TTA

Statement and amendment by patent owner:

(A) Except as otherwise provided in § 1.501(e), no

statement or other response by the patent owner

shall be filed prior to the determinations made in

accordance with §§ 1.515 or 1.520. Ifa premature

statement or other response is filed by the patent

owner it will not be acknowledged or considered

in making the determination.

See MPEP § 1.150(e). A request filed by the

patent owner, may include a proposed amendment

in accordance with § 1.121(f).

See MPEP § 1.121(f) . Proposed amendments in

patents involved in reexamination proceedings

must be presented in the form of a full copy of the

text of: (1) Each claim which is amended and (2)

each paragraph of the dvscription which is

amended. Matter deleted from the patent shall be

placed between brackets and matter added shall be

underlined. Copies of the printed claims from the

patent may be used with any additions being

indicated by carets and deleted materials being

placed between brackets. Claims must not be

renumbered and the numbering of the claims

added for reexaminations must follow the number

of the highest numbered patent claims. No

amendments may enlarge the scope of the claims

of the patent . No new matter may be introduced

into the patent.

78A

1. A disposable vaginal swab comprised

of a housing surrounding a swab member comprised

of a stiff core member and an absorbent outer

covering secured thereto, at least a portion of s

aid housing comprising a removable cover

to close said housing and protect said swab member

within said housing, said core member being movably

retained within said housing so as to be moveable

between a first retracted position and a second

extended position relative to said housing when

said cover has been removed and means for moving

said core member between said first retracted and

said second extended positions.

2. A swab as in claim 1, wherein said

adsorbent cover is comprised of a textile gauze-

like fabric.

3. A swab as in claim 1, where said

moving means includes a rotatable member rotatably

secured to said housing and cam means operatively

connecting at least a portion of said core member and the

interior of said housing together so that said core member

will move vertically within said housing as said rotatable

member is rotated.

4. A swab as in claim 3, wherein said

core means Comprises a cam member fixed to the

core member and a tube rotatably retained within

said housing and about said core member, said tube

member including means defining at least one

helical slot extending along length thereof

with said core member being operatively associated

with said helical slot.

7T9A

ee ee

| 5.1. A vaginal swab comprised of an outer

2 housing having a closed and open end on opposing

3 ends thereof, said housing including an annular

4 band defining said open end and a plurality of

5 frangible seams that together define a pair of

6 removable members and a pair of housing segments

7 hingably secured to said annular band following

8 removal of said removable members, a swab core

9 member having a predetermined exterior shape, said

10 core member having an annular base with an outer

11 diameter équal to the inner diameter of said

12 annular band and an adsorbent member secured to

13 said core member, said core member being secured

14 within said housing so that said adsorbent member

is enclosed therein.

6: 2. A vaginal swab comprising and outer

housing including an inner case member and an

outer case member at least part of which is

connected to and overlies said inner case member;

a core member, at least one layer of a

porous material secured to said core member, and

housing means for supporting and enclosing said

core member, said core member being secured to

said housing means, having at least two portions

movable relative to one another between first and

second positions for enclosing said core member

when in said first position and for both exposing

said core member and the said porous padding

secured thereto and for forming a handle for said

swab when in said second position.

iia

Nr WNeK SCO CON A WN & WwW LD =

80A

UNITED STATES DEPARTMENT OF COMMERCE

Patent and Trademark Office

Address; COMMISSIONER OF PATENTS AND

TRADEMARKS , WASHINGTON DC 20231

Serial Number 06/434,828

Filing Date 10/18/82

First Named Applicant HEMPHILL A.

Attorney Docket Number

Cushman, Darby & Cushman

1801 K. St., N.W. 2" FLR.

Washington, DC 20006

Examiner Yasko, J.

Art Unit 336

Paper Number 4

Date Mailed 02/28/84

This is a communication from the examiner in charge of

your application.

A shortened statutory period for response to this action is

set to expire 30 days from the date of this letter.

SUMMARY OF ACTION

1. Claims 1-6 are pending in the application.

6. Claims 1-6 are subject to restriction or election

requirement. :

81A

Serial No. 434,828, Art Unit 336 -2-

(1) This application contains claims directed to the

following patentably distinct species of the

claimed invention: Figs. 1-2a: Figs. 3-4a” Fig. 6:

Figs. 8,9 respectively.

Applicant is required under 35 U.S.C. 121 to elect

a single species for prosecution on the merits to which the

claims shall be restricted if no generic claim is finally held

to be allowable. Currently, c

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