## Facts

- Kimberly-Clark owned the Roeder patent (U.S. Patent No. 3,672,371) covering a sanitary napkin wrapper/fastening design using pressure-sensitive adhesive on the wrapper’s outside.
- The asserted claims required two longitudinal adhesive lines positioned so they penetrated and sealed specified overlapping regions of a two-ply wrapper, with each overlap sealed by a single adhesive strip.
- Johnson & Johnson sold sanitary napkins using pressure-sensitive adhesive strips to fasten to undergarments, but with a different relationship between adhesive placement and wrapper overlap structure.
- Johnson & Johnson relied on earlier Kimberly-Clark internal work to challenge validity and enforceability:
  - An earlier Champaigne design, reduced to practice before Roeder’s work, similar to Roeder’s but using only one adhesive strip.
  - Mobley notebook work that had not been reduced to practice or publicly disclosed.
- The district court found noninfringement, held the Roeder patent invalid for obviousness, and held it unenforceable for fraud/inequitable conduct based on nondisclosure of internal work.
- Kimberly-Clark appealed.

## Issues

1. Whether the district court correctly construed the Roeder claims and correctly found no infringement by Johnson & Johnson’s products.
2. Whether the district court properly held the Roeder claims obvious under 35 U.S.C. § 103 based on the asserted prior art, including internal corporate work.
3. Whether the record supported unenforceability for inequitable conduct based on nondisclosure of internal work, including materiality and intent to deceive the PTO.

## Decision

- The Federal Circuit affirmed the judgment of noninfringement.
- The Federal Circuit reversed the judgment of invalidity for obviousness.
- The Federal Circuit reversed the judgment of unenforceability for fraud/inequitable conduct.
- The case was remanded for further proceedings consistent with the appellate decision.

## Legal Principles

- Claims must be construed consistently across validity and infringement; a construction used to assess validity must be applied the same way when assessing infringement.
- Literal infringement requires the accused product to meet the claim limitations, including specific structural relationships (here, two adhesive lines that penetrate and seal designated wrapper overlaps).
- Obviousness under § 103 requires analysis of the claimed combination as a whole; it is insufficient to treat the invention as obvious merely because individual elements appear in the prior art.
- Internal corporate work is not automatically “prior art” for obviousness; it must qualify under the statutory categories of 35 U.S.C. § 102 before it can be treated as prior art in a § 103 analysis.
- Inequitable conduct requires proof of materiality and intent to deceive the PTO; nondisclosure of internal information, without evidence of knowledge and deceptive intent by those owing a duty of candor, does not establish inequitable conduct.

## Conclusion

The Federal Circuit held that Johnson & Johnson did not infringe because its products lacked the claimed two-adhesive-line configuration sealing the wrapper overlaps, and it reinstated the Roeder patent’s validity and enforceability by rejecting the district court’s obviousness analysis and its inequitable-conduct finding for lack of proven materiality and intent to deceive.


Kimberly-Clark Corp. v. Johnson & Johnson, 745 F.2d 1437 (Fed. Cir. 1984)