Kimberly-Clark v. First Quality: District Court Excludes Expert Testimony on Obviousness for Failure to Include the Opinion on Obviousness in the Expert Report

Kimberly-Clark Worldwide, Inc. ("Kimberly-Clark) filed a patent infringement action against First Quality Baby Products, LLC ("First Quality") over a variety of patents relating to disposable absorbent products, such as diapers and incontinence products, inlcuding U.S. Patent No. 5,147,343 (the "Kellenberger Patent"), which relates to an absorbent composite or core for use in disposable absorbent products. As explained by the district court, "[t]he absorbent core consists of a matrix of fibers with suberabsorbant polymer ("SAP") dispersed between the pores of the matrix. An SAP is a chemical compound capable of absorbing ten or more times its own weight in fluid-a useful property for products designed to absorb and retain fluids."

As one of its defenses, First Quality argued that the Kellenberger Patent was invalid for obviousness. Defendants had previously moved for summary judgment on the of obviousness and had argued in support of that motion that the only feature distinguishing the Kellenberger Patent from the prior art was its use of a new SAP in the absorbent core to replace an older, less effective SAP. "In short, Defendants argued that Plaintiff simply took a new SAP (invented by a third party) and included it in a preexisting diaper design, and that it was obvious to do so. By memorandum issued July 8, 2013, the court denied Defendants' motion after finding genuine disputes of material fact as to whether it would have been obvious to substitute the new SAP."

Before trial, Kimberly-Clark moved in limine to limit the trial testimony of Dr. Stephen Goldman, a technical expert for First Quality, arguing that Dr. Goldman should be precluded from testifying that the asserted claims of the Kellenberger Patent are invalid for obviousness because that opinion was not included in his original expert report. First Quality also asserted that Dr. Goldman should be prohibited from testifying that the Kellenberger Patent (and/or related patents) are invalid under 35 U.S.C. § 102(f) because the inventors "did not invent the subject matter of the asserted claims" on the grounds that "determination of inventorship is ultimately a question of law."

In response, Frist Quality asserted that it has long maintained that the Kellenberger
Patent was invalid for obviousness and that Dr. Goldman should be permitted to so testify. First Quality also asserted that the determination of inventorship under § 102(f) is a question of fact.

Turning to the first issue, the district court agreed with Kimberly-Clark that Dr. Goldman's original expert report did not include an opinion that the Kellenberger Patent is invalid for obviousness. "While the background section of the report discusses Dr. Goldman's understanding of the concept of obviousness, the report ultimately concludes that the Kellenberger Patent is invalid for two different reasons: (1) it is anticipated by a diaper manufactured in Japan prior to the filing of the Kellenberger Patent; and (2) Plaintiff did not invent the subject matter claimed by the Kellenberger Patent (i.e., the "inventors" simply put a third party's SAP into an existing diaper). While Defendants argue that Dr. Goldman should be permitted to testify that "the [Kellenberger] inventors' incorporation of a [SAP] (which they did not invent) into a diaper (which they did not invent) was obvious" (Doc. 963 at 3) (emphasis supplied), this opinion is simply not contained in his expert report. The report's omission of an obviousness opinion is even more evident after considering a report Dr. Goldman authored regarding another patent-in-suit, in which he expressly and repeatedly found that the other patent was invalid for obviousness."

As a result, the district court found that the opinion should be excluded.

On the second issue, the district court found that Dr. Goldman testimony was consistent with his prior report, i.e., that the Kellenberger Patent is invalid under § 102(f) because the named inventors did not, in fact, invent the claimed invention. The district court further explained that "[a]ccording to 35 U.S.C. § 102(f), a person is not entitled to a patent if 'he did not himself invent the subject matter sought to be patented.'" Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1344 (Fed. Cir. 2003). To prove such "derivation," the Federal Circuit has explained that "'the party asserting invalidity must prove both prior conception of the invention by another and communication of that conception to the patentee' by clear and convincing evidence." Id. (quoting Gambro Lundia AB v. Baxter Healthcare Corp., 110 F.3d 1573, 1576 (Fed. Cir. 1997)). The finding of derivation is a question of fact. Id."

Accordingly, the district court permitted the expert to testify regarding the inventorship issue, finding it was disclosed in the report and was an issue of fact.

Kimberly-Clark Worldwide, Inc. v. First Quality Baby Products, LLC, Case No. 1:09-cv-1685 (M.D. Penn. Dec. 12, 2013)