                           UNITED STATES DISTRICT COURT
                           FOR THE DISTRICT OF COLUMBIA


 ALLEGRA HEMPHILL,

    Plaintiff,
                                                         Civil Action No. 12-279 (CKK)
        v.

 JOHNSON & JOHNSON,

    Defendant.


                                 MEMORANDUM OPINION
                                    (January 29, 2013)

       For more than a decade, Plaintiff Allegra Hemphill has filed suit in federal courts seeking

to hold various companies liable for purportedly infringing United States Patent No. 4,557,720

(the “‘720 Patent”). This case represents the Plaintiff’s fifth complaint alleging infringement of

the ‘720 patent, and the second against Defendants Johnson & Johnson. Presently before the

Court is the Defendant’s [7] Motion to Dismiss Complaint Under Rule 12(b)(6). The motion is

fully briefed and ripe for adjudication. Upon consideration of the pleadings, the relevant legal

authorities, and the record as a whole, the Court finds as a matter of law the Plaintiff cannot

recover for any alleged infringement of the ‘720 patent by the Defendant. Accordingly, the

Defendant’s [7] Motion to Dismiss Complaint Under Rule 12(b)(6) is GRANTED and the

Complaint is DISMISSED.

                                      I. BACKGROUND

       For purposes of the Defendant’s motion to dismiss, the Court presumes all well-pleaded

factual allegations in the Complaint are true. Atherton v. D.C. Office of Mayor, 567 F.3d 672,

681 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 2064 (2010).         The Plaintiff filed a patent
application for a “vaginal applicator” on June 11, 1984, claiming a priority date of October 18,

1982. Compl., Ex. 1 (‘720 Patent) at 1. The United States Patent and Trademark Office issued

the ‘720 Patent on December 10, 1985 with two independent claims describing a disposable

vaginal swab, intended to be used for cleansing or treating the vaginal area. Id. at 1, 4-5. The

USPTO confirmed the patentability of both claims following reexamination proceedings in 1999.

Pl.’s Ex. 2 (1/26/1999 Reexamination Certificate) at 1-2.

       The Plaintiff initially filed suit against Johnson & Johnson in United States District Court

for the District of Maryland in 1999, alleging Johnson & Johnson’s Stayfree, Carefree, and

Serenity sanitary napkins and adult incontinence products infringed claim 2 of the ‘720 Patent.

Hemphill v. McNeil-PPC, Inc., 134 F. Supp. 2d 719, 723 (D Md. 2001) (Hemphill I). The

Maryland District Court substituted McNeil-PPC as the proper defendant and granted summary

judgment of noninfringement in favor of the defendant. Id. at 721, 727-29. The Federal Circuit

affirmed the district court’s claim construction and findings of non-infringement on appeal.

Hemphill v. McNeil-PPC, Inc., 25 F. App’x 915 (Fed. Cir. 2001). The Plaintiff subsequently

filed three separate suits against Kimberly-Clark Corp. and Procter & Gamble Co. alleging

infringement of the ‘720 patent, all of which resulted in judgments in favor of the defendants.

See Hemphill v. Kimberly Clark Corp., 605 F. Supp. 2d 183, 186-87 (D.D.C. 2009); Hemphill v.

Kimberly-Clark Corp., 530 F. Supp. 2d 108, 110 (D.D.C. 2008), aff’d 335 F. App’x 964 (Fed.

Cir. 2008); Hemphill v. Procter & Gamble Co., 258 F. Supp. 2d 410, 413 (D. Md. 2003), aff’d 85

F. App’x 765 (Fed. Cir. 2004).

       The Plaintiff filed the present Complaint on February 21, 2012, alleging Johnson &

Johnson’s Stayfree and Carefree feminine care products directly infringe the ‘720 Patent, and

that the Defendant induced infringement of the ‘720 Patent by a third party. See generally

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Compl., ECF No. [1]. Johnson & Johnson now moves to the dismiss the Complaint as untimely

and barred by res judicata.

                                   II. LEGAL STANDARD

       Federal Rule of Civil Procedure 12(b)(6) provides that a party may challenge the

sufficiency of a complaint on the grounds it “fail[s] to state a claim upon which relief can be

granted.” Fed. R. Civ. P. 12(b)(6). “[A] complaint [does not] suffice if it tenders ‘naked

assertion[s]’ devoid of ‘further factual enhancement.’” Ashcroft v. Iqbal, 556 U.S. 662, 129 S.

Ct. 1937, 1949 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 557 (2007)). Rather, a

complaint must contain sufficient factual allegations that, if accepted as true, “state a claim to

relief that is plausible on its face.” Twombly, 550 U.S. at 570. “A claim has facial plausibility

when the plaintiff pleads factual content that allows the court to draw the reasonable inference

that the defendant is liable for the misconduct alleged.” Iqbal, 129 S. Ct. at 1949. Additionally,

in deciding a Rule 12(b)(6) motion, a court may consider “the facts alleged in the complaint,

documents attached as exhibits or incorporated by reference in the complaint,” or “documents

upon which the plaintiff’s complaint necessarily relies even if the document is produced not by

[the parties].” Ward v. D.C. Dep’t of Youth Rehab. Servs., 768 F. Supp. 2d 117, 119 (D.D.C.

2011) (citations omitted).

                                      III. DISCUSSION

       The Defendant argues the Complaint should be dismissed for two reasons: (1) Plaintiff’s

claims are precluded by the doctrine of res judicata; and (2) Plaintiff’s claims are untimely. The

Court finds that the Plaintiff’s claims of direct and indirect infringement were not timely

asserted. Therefore, the Court does not reach the Defendant’s res judicata argument.

       Several sections of Title 35 of the United States Code in combination govern the

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availability of a remedy for Plaintiff’s claim of infringement. Section 271, on which Plaintiff

bases her claim of infringement, provides in relevant part:

       (a) Except as otherwise provided in this title, whoever without authority makes,
       uses, offers to sell, or sells any patented invention, within the United States or
       imports into the United States any patented invention during the term of the patent
       therefor, infringes the patent.

       (b) Whoever actively induces infringement of a patent shall be liable as an
       infringer.

35 U.S.C. § 271. As the text of section 271 indicates, a defendant is only liable for any

infringing activity that took place “during the term of the patent.”

       Section 154(c)(1) defines the term of the ‘720 Patent as the later of (1) seventeen years

from the date the patent issued; or (2) twenty years from the earliest filing date of an application

on which the patent’s priority date is based. In other words, the term of the ‘720 patent is the

later of (1) seventeen years from December 10, 1985—December 10, 2002; or (2) twenty years

from October 18, 1982—October 18, 2002.

       The Plaintiff implies in her Opposition that the reexamination certificate issued by the

United States Patent and Trademark Office on January 26, 1999, somehow altered the term of

‘720 Patent. To the contrary, reexamination certificates do not alter the term of a patent, even if

a new claim is added or an original claim is amended during reexamination. See 35 U.S.C.

§ 307(b) (incorporating by reference 35 U.S.C. § 252). The reexamination certificate simply

confirmed that the claims were patentable when the ‘720 patent issued in December 1985.

Compl., Ex. 2 at 2 (“As a result of reexamination, it has been determined that: The patentability

of claims 1 and 2 is confirmed.”) (emphasis added). Regardless of reexamination, the ‘720

patent expired on December 10, 2002, and Johnson & Johnson is not liable for any infringement

(direct or induced) of the claims of the patent that might have occurred after that date.

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       The final statutory provision relevant to the Defendant’s motion is section 286, which

states that “no recovery shall be had for any infringement committed more than six years prior to

the filing of the complaint.” 35 U.S.C. § 286. For purposes of the present Complaint, the

Plaintiff cannot recover for any infringement committed before February 21, 2006—over three

years after the expiration of the ‘720 Patent. In combination, sections 271 and 286 bar the

Plaintiff from recovering for any alleged infringement of the ‘720 patent by Johnson & Johnson.

As a matter of law, the Plaintiff cannot recover for any infringing activity that took place during

the term of the ‘720 patent, therefore the Complaint must be dismissed.

                                       IV. CONCLUSION

       For the foregoing reasons, the Court finds the Plaintiff’s claims are untimely. The ‘720

patent expired on December 10, 2002. The Plaintiff can only recover for infringing conduct that

took place (1) before the patent expired; and (2) within six years of the date the complaint was

filed. The Plaintiff filed her Complaint on February 10, 2012. Because the patent expired more

than six years prior to the filing of the Complaint, as a matter of law, the Plaintiff cannot recover

for any purportedly infringing conduct. Accordingly, the Defendant’s [7] Motion to Dismiss

Complaint Under Rule 12(b)(6) is GRANTED

       An appropriate Order accompanies this Memorandum Opinion.



                                                          /s/
                                                      COLLEEN KOLLAR-KOTELLY
                                                      UNITED STATES DISTRICT JUDGE




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