# Petition for Writ of Mamdamus — In Re Hemphill > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386020_1750%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Mamdamus - **Published:** January 1, 2004 - **Citation:** 543 U.S. 808 ## Text Su, Q) 03163 35 AR 3 6 200 IN THE Supreme Court of the Wnited States “In re ALLEGRA D. HEMPHILL” Petitioner, v. 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” il 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. iv 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 V 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 vi 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 ix 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 xX 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 Xi 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 FO RE Fi ccctcccomninnininiminaaemmiammnn 7 28 U.S.C. nr eer situsinniinhiaiahladandlia 1,30 BR. TG cccscvesisrncsniserinsansineinennsinniiionnintonimemammnadliin 3 FO. Wiiiccccciicotivinsrecniecninciiandinaamianiiaaamaae 11,27 BEB, Hi Riseciisccessiersmsenrnhsnisinsnninenacinnnineiedimeaaiaia 11,27 USL. FI ikiitsntemiminmmentimznm aaa TSUBA. BEGG cceninsstenererisinempaceacnmiammmiamaial 3,14 l 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 2 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. 3 “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. 4 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 5 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. nT 6 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. 7 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 : : 8 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. eeeeeEeEe—e—e—eeeee Wee: ow. teat es 9 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 = 11 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. 12 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 — Prin th pe he GS whl 4 gael ae apy L bible RRA AD RMN NP he ae ty PEER RRA ED By 908 St SR PEO EL! eget APOE Mei, SIGB ND ies ai A aeioras Se ie - re ee 13 ‘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. 14 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 15 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. 16 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. 17 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 18 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 19 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. 20 “(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 21 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, 22 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”: 23 (“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. 24 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...’ 25 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 ®. 26 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. 27 “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. 28 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. 29 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 30 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, v. PROCTER & GAMBLE CO., Defendant-Appellee, v. KIMBERLY-CLARK CORPORATION Defendant-Appellee. RADER, BRYSON, and GAJARSA, Circuit Judges. RADER, Circuit Judge. DECIDED: JANUARY 15, 2004 JUDGEMENT ENTERED JANUARY 15, 2004 1A nite VatessCuut we. 4pjrals fan the Federal Circuit 03-1463 ALLEGRA D. HEMPHILL, Plaintiff-Appellant, v. PROCTER & GAMBLE CO., Defendant-Appellee, v. 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 2A 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, v. PROCTER & GAMBLE CO., Defendant-Appellee, Vv 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 4A 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 SA 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 6A 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 7A 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 8A 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 9A 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 10A 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 11A 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 12A 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 13A 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. 14A 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 15A 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. 16A 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 17A 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 18A 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 21A 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. 22A 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 23A 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 ee 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- v. 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 1S 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, v. 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 31A 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 v. 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 Vv 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 a IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND ALLEGRA D. HEMPHILL v. 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 v. 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 v. 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: 46A 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 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. 48A 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 At page 1 of the specification, the following has been inserted, —This Application is a centinuation of Serial #434,828 filed October 18, 1982 now abandoned-. /s/ /s/ C. Scott/mb John D. Yasko 703-557-3125 Examiner 12/18/84. Art Unit 336 96A UNITED sratrrco DOrARTMENT OF COMMCRCL Patents and Trademark Office 619, 684 UNITED STATLC% DEPARTMENT OF COMMERCE Patent and Trademark Office Address: COMMISSIONER OF PATENTS AND TRADEMARKS WASHINGTON, DC 20231 - A. Gomillion 12-19-84 EXAMINER ART UNIT PAPER NUMBER Paper Number 3/.A DATE MAILED: JAN 7-1985 This is a communication from the examiner in charge of your application COMMISSIONER OF PATENTS AND TRADEMARKS 1. THIS IS AN ATTACHMENT TO THE NOTICE OF ALLOWANCE AND BASIC ISSUE FEE DUE, PTOL 85. 2. All the claims being allowable, PROSECUTION ON THE MERITS CLOSED in this application. If not attached hereto, a Notice of Allowance or other appropriate communication will be sent in due course. B. Formal drawings are now required and MUST BE SUBMITTED WITHIN THE THREE MONTH STATUTORY PERIOD SET FOR PAYMENT OF THE BASE ISSUE FEE IN THE “NOTICE OF ALLOWANCE 97A AND BASE ISSUE FEE DUE” (PTOL-85). Note that the statute docs not permit extension of the three monthe a). The claims are allowed in view of: b) Applicant’s communication filed June 11, 1984. c) The attached Examiner’s Amendment. d) The allowed claims are 5 and 6. 4. Note attached NOTICE OF REFERENCES CITED, PTO -892 which is part of this communication. The listed references are considered to be permitted to the claimed invention, but the claims are deemed to be patentable thereover. 5. Note attached LIST OF ART CITED BY APPLICANT, PTO -1449. /s/ John D. Yasko Examiner Art Unit 336 98A UNITED STATES DEPARTMENT OF COMMERCE . Patents and Trademark Office ORDER GRANTING/DENYING REQUEST FOR REEXAMINATION McNair U.S.Patent 4,285,343 ReExamination No. 90/004,908 Date mailed 04/15/98 The request for reexamination is DENIED. In due course, a refund under CFR 1.26(c) will be made to requester (listed below if not patent owner) by Treasury check. ReExamination No. 90/004,908 Art Unit 3734 Decision No substantial new question of patent ability is raised by the request for reexamination and prior art cited therein for the reasons set forth below. The newly cited U.S. patent 4,285,343 issued to McNair does not raise a substantial new question of patent ability as to claims 1 and 2 of the requesters U.S. Patent 4,557,720 issued to Hemphill. The claims of the Hemphill patent for which reexamination is requested , require “A vaginal swab comprised of...a pair of hinged housing segments defined by a plurality of frangible seams...in which an absorbent member is enclosed therein.” And in claim 2, “a vaginal swab...including a moveable inner and outer case 99A member;” a core member...including at least one layer of porous material secured to a 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 moveable relative to one another between first and second positions for enclosing said core member when is said first position and for both exposing said core member and the said porous material secured thereto and for forming a handle for said swab when in said second position.” The U.S. patent to McNair discloses none of the structural features recited, supra. Further, the McNair patent is neither relevant under 35 U.S.C. 102 nor U.S.C. 103. Accordingly, since the newly submitted prior art McNair presents no substantial new question of patent ability, the request for reexamination is DENIED. J. Yasko:lf /s/ ) 703 308-2986 April 3, 1998 100A UNITED STATES DEPARTMENT OF COMMERCE Patents and Trademark Office ORDER GRANTING/DENYING REQUEST FOR REEXAMINATION Serial Number 90/004987 Patent under reexamination : 4,557,720 Date mailed 07/06/98 Art Unit 3735 The request for reexamination has been considered. Identification of the claims, the references relied on, and the rationale supporting the determination are attached. Attachment(s); PTO-892. The request for reexamination is GRANTED. Serial Number 90/004987 Art Unit 3735 ; A substantial new question of patent ability affecting claim 2 of United States Patent Number 4,557,720 is raised by the request for reexamination. Extensions of time under 37 CFR 1.136(a) will not be permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to “an applicant” and not to parties in a reexamination proceeding. Additionally, 35 U.S.C. 305 requires that reexamination proceedings “will be conducted with special dispatch” (37 CFR 1.550 (a)). Extensions of time in reexamination proceedings are provided for in 37 CFR 1.550(c). The request for re-examination indicates that the 101A patent to Srininvasan et al. . (39735567) may be relevant to claim 2 and the examiner feels that further consideration of this reference is warranted as it was not considered during prosecution of patent #4,557,720. The request also presents arguments as to why claim 2 is patent able over the patent to Srininvasan et al. . (3973567). It is agreed that the reference to Srininvasan et. al. raises a substantial new question of patent ability with respect to claim 2. Srininvasan et al.., has structure that may read on claim 2 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). For these reasons the examiner considers that there is a substantial new question of patent ability with respect to claim 2 versus the patent to Srininvasan et. al. (“s/ ) John G. Weiss D.R. (Initials) Supervisory Patent Examinet Assistant Examiner, Sector 3700 Group 3700 102A UNITED STATES DEPARTMENT OF COMMERCE Patents and Trademark Office NOTICE OF INTENT TO ISSUE REEXAMINATION CERTIFICATE Examination has been terminated in this re-exam proceeding and a certificate will be issued in due course in view of patent owner’s communication filed on 7/14/98; 7/11/98 and 7/24/98. The Reexamination Certificate will indicate the following:: Change in the Specification : No Change in the Drawings: No Status of the Claims : Patent claims confirmed 1,2. Note attached statements of reasons for patent ability and/or confirmation. Any comments considered necessary by patent owner regarding reasons for patent ability and/or confirmation must be submitted promptly to avoid processing delays. Such submissions should be labeled: “Comments on Statement of Reasons for Patent ability and/or Confirmation”. (“s/ ) John G. Weiss Supervisory Patent Examiner Group 3700 cc. Requestor r Re-exam no. 90/004987 Date mailed 10/07/98 Art Unit 3735 STATEMENT OF REASONS FOR PATENT ABILITY AND/OR CONFIRMATION The following is an examiner’s statement of reasons for patent ability and/or confirmation of the claims found pat [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386020_1750%3A1. Public record. Not legal advice.