Edgewell Personal Care Brands, LLC et al. v. Munchkin, Inc.
NEWMAN, MOORE, HUGHES
March 9, 2021
Brief Summary: DC grant of SJ vacated-in-part, reversed-in-part and remanded (claim construction “dependent on the way the claimed cassette is put to use in an unclaimed structure”, erroneous function-way-result analysis).
Summary: Edgewell appealed DC grant of summary judgment (SJ) of noninfringement to Munchkin regarding U.S. Pat. Nos. 8,899,420 and 6,974,029 “directed only to a cassette” of Edgewells’ Diaper Genie (which as sold includes “(i) a pail for collection of soiled diapers; and (ii) a replaceable cassette that is placed inside the pail and forms a wrapper around the soiled diapers.”) Edgewater alleged literal and doctrine of equivalents (DOE) infringement but only DOE infringement after the DC’s claim construction. The DC granted Munchkin SJ of noninfringement after determining “that there was no space between the cassette and the pail after the cassette was installed”. In this appeal, Edgewood argued the DC erred in its construction of the claim term “clearance”. The FC panel explained that “[a]n apparatus claim is generally to be construed according to what the apparatus is, not what the apparatus does” (Hewlett-Packard, FC 1990) and “it is usually improper to construe non-functional claim terms in apparatus claims in a way that makes infringement or validity turn on the way an apparatus is later put to use” (Paragon Solns., FC 2009). As the disputed ‘420 Patent claims are directed to the cassette, the FC panel wrote that “absent an express limitation to the contrary, the term “clearance” should be construed as covering all uses of the claimed cassette” (Catalina Mktg., FC 2002). The FC panel concluded that the DC erred by precluding in its construction “engagement when the cassette is inserted into the pail” as it is “dependent on the way the claimed cassette is put to use in an unclaimed structure.” The ‘029 Patent claims include an “annular cover” and “tear-off section” that the DC construed to be “part of a single structure”. The FC panel agreed with the DC’s construction based on “[t]he plain language of the claims” and the written description. However, it agreed with Edgewell that the DC erred in granting SJ to Munchkin under the DOE “on the basis that the claimed ‘annular cover’ and ‘tear-off’ would be vitiated and rendered meaningless” (Akzo Nobel, FC 2016 (DOE “fails if it renders a claim limitation inconsequential or ineffective”); Warner-Jenkinson, US 1997 (“vitiation doctrine ensures the application of the doctrine of equivalents does not ‘effectively eliminate [a claim] element in its entirety’”); DC “erred in evaluating this element as a binary choice between a single-component structure and a multi-component structure, rather than evaluating the evidence to determine whether a reasonable juror could find that the accused products perform substantially the same function, in substantially the same way, achieving substantially the same result as the claims” (Bio-Rad, FC 2020)). The FC panel, therefore, reversed the DC’s grant of SJ regarding the ‘029 Patent.