Wednesday, June 02, 2021

The Munchin case on a diaper pail system

Note: Chief Judge Moore assumed the position of Chief Judge on May 22, 2021.

The outcome of the Munchin case was a mixed bag:

Edgewell Personal Care Brands, LLC, and International Refills Company, Ltd. (collectively, Edgewell) sued Munchkin, Inc. in the Central District of California for infringement of claims of U.S. Patent Nos. 8,899,420 and 6,974,029. Edgewell manufactures and sells the Diaper Genie, which is a diaper pail system that has two main components: (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. The ’420 patent and the ’029 patent relate to alleged improvements in the cassette design. See, e.g., ’420 patent at 2:18–32; ’029 patent at Abstract. As relevant to this appeal, Edgewell accused Munchkin’s Second and Third Generation refill cassettes, which Munchkin marketed as being compatible with Edgewell’s Diaper Genie-branded diaper pails, of infringement. J.A. 18474.

In February 2019, the district court issued a claim construction order, construing terms of both the ’420 patent and the ’029 patent. Based on those constructions, Edgewell continued to assert literal infringement of the ’420 patent, but only asserted infringement under the doctrine of equivalents for the ’029 patent. Munchkin moved for, and the district court granted, summary judgment of noninfringement of both patents. See Edgewell Personal Care Brands, LLC v. Munchkin, Inc., No. 18-3005-PSG, 2019 WL 7165917 (C.D. Cal. Oct. 16, 2019) (Summary Judgment Decision). Edgewell appeals. We have jurisdiction under 28 U.S.C. § 1295(a)(1). For the reasons discussed below, we vacate-in-part, reverse-in-part, and remand

The topic of claim vitiation arises:

We agree with Edgewell, however, that the district court erred in granting summary judgment of noninfringement of the ’029 patent under the doctrine of equivalents on the basis that the claimed “annular cover” and “tear-off” would be vitiated and rendered meaningless. Summary Judgment Decision, 2019 WL 7165917, at *6. “Under the doctrine of equivalents, an infringement theory . . . fails if it renders a claim limitation inconsequential or ineffective.” Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1342 (Fed. Cir. 2016). This vitiation doctrine ensures the application of the doctrine of equivalents does not “effectively eliminate [a claim] element in its entirety.” Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997). Claim vitiation is a legal determination that “the evidence is such that no reasonable jury could determine two elements to be equivalent.” Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356–57 (Fed. Cir. 2012); see also UCB, Inc. v. Watson Labs. Inc., 927 F.3d 1272, 1283 (Fed. Cir. 2019) (Vitiation “is not an exception or threshold determination that forecloses resort to the doctrine of equivalents, but is instead a legal conclusion of a lack of equivalence based on the evidence presented and the theory of equivalence asserted.”). We review de novo a district court’s application of claim vitiation. Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308, 1320–21 (Fed. Cir. 2003). Although the district court correctly construed “annular cover” as being a single structure, the district court erred in concluding that Edgewell’s theory of infringement under the doctrine of equivalents vitiates or renders meaningless the “annular cover” claim element. Vitiation has its clearest application “where the accused device contain[s] the antithesis of the claimed structure.” Planet Bingo, LLC v. GameTech Int’l, Inc., 472 F.3d 1338, 1345 (Fed. Cir. 2006). But as we explained in Deere & Co., 703 F.3d at 1356–57, “[c]ourts should be cautious not to shortcut this inquiry by identifying a ‘binary’ choice in which an element is either present or ‘not present.’” See also Cadence Pharms. Inc. v. Exela PharmaSci Inc., 780 F.3d 1364, 1372 (Fed. Cir. 2015) (“The determination of equivalence depends not on labels like ‘vitiation’ and ‘antithesis’ but on the proper assessment of the language of the claimed limitation and the substantiality of whatever relevant differences may exist in the accused structure.”).
Applying these concepts to the facts of this case, we conclude that the district court 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. See, e.g., Bio-Rad Labs., Inc. v. 10X Genomics, Inc., 967 F.3d 1353, 1368 (Fed. Cir. 2020) (limiting question of infringement under doctrine of equivalents to a “binary choice between ‘flourinated’ and ‘non-flourinated’ microchannels” was improper where a reasonable juror could have found negligibly-flourinated microchannel performed substantially the same function).

The outcome

Because the district court based its grant of summary judgment of noninfringement of the ’420 patent on an erroneous construction, we vacate that judgment and remand. Because the district court erred in granting Munchkin summary judgment of noninfringement of the ’029 patent, we reverse that judgment and remand.


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