Federal Circuit Throws Out Diaper Genie Decision
EDGEWELL PERS. CARE BRANDS, LLC v. MUNCHKIN, INC.
Before Newman, Moore, and Hughes. Appeal from the U.S. District Court for the Central District of California.
Summary: Apparatus claims’ non-functional terms should be construed to cover all of the apparatus’ uses; vitiation cannot be used to shortcut the doctrine of equivalents analysis.
Edgewell Personal Care Brands, LLC and International Refills Company, Ltd. sued Munchkin, Inc. for infringement of U.S. Patent Nos. 8,899,420 and 6,974,029. These patents cover a specialized garbage can, which includes a pail and a cassette that dispenses a plastic wrapper for used diapers. The ’420 patent’s claims are directed to a cassette with a “clearance” in the portion of the pail that holds the cassette. The ’029 patent’s claims are directed to a cassette with an “annular cover” with a “tear-off section.” After construing the patents’ claims, the district court granted summary judgment of no literal infringement for the ’420 patent and no infringement under the doctrine of equivalents for the ’029 patent.
On appeal, the Federal Circuit vacated summary judgment for the ’420 patent, reversed summary judgment for the ’029 patent, and remanded. With respect to the ’420 patent, the Federal Circuit held the district court erred in its construction of “clearance” by adding in a requirement that a space remain between the cassette and pail after installation of the cassette. The Federal Circuit explained: “it is usually improper to construe non-functional claim terms in apparatus claims in a way that makes infringement . . . turn on the way an apparatus is later put to use.” Because of this error in claim construction, the Federal Circuit vacated summary judgment of non-infringement for the ’420 patent. With respect to the ’029 patent, the Federal Circuit affirmed the district court’s claim construction, but nevertheless reversed the summary judgment of no infringement under the doctrine of equivalents because the district court incorrectly applied a claim vitiation analysis. The Federal Circuit explained vitiation applies only if the theory of infringement renders a claim element “inconsequential or ineffective.” The Federal Circuit cautioned that courts should not “shortcut [the doctrine of equivalents] inquiry by identifying a ‘binary’ choice in which an element is either present or ‘not present.’” Instead, a court must evaluate the evidence and 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. In view of testimony from Edgewell’s expert, the Federal Circuit held there was a genuine issue of material fact sufficient to preclude summary judgment, and reversed.
Editor: Paul Stewart
Written by: Ben K. Shiroma & Jeremiah S. Helm, Ph.D.