Angelcare And Playtex Seal Another Win Against Patent Infringer Munchkin

• Published date: 05 April 2024
• Law Firm: Smart & Biggar
• Author: Mr Denise Felsztyna and Guillaume Lavoie Ste-Marie

On August 17, 2023, the Federal Court issued its decision in Angelcare Canada Inc. et al. v Munchkin Inc. et al. (2023 FC 1111) regarding the Plaintiffs' entitlement to certain remedies for patent infringement. This decision follows a judgment issued on April 20, 2022, as amended on June 24, 2022, which found that the Defendants Munchkin, Inc. and Munchkin Baby Canada Ltd (the "Defendants" or "Munchkin") infringed numerous valid patents owned by the Plaintiffs for their diaper disposal system sold under the "Diaper Genie" brand name.

This decision provides clarification for rights holders on their entitlement to injunctive relief when the infringing products are no longer sold on the Canadian market as well as on their ability to claim remedies where there have been multiple corporate rearrangements and the patents in suit are subject to assignments and licenses. The decision also reiterates the applicable tests on entitlement to different types of monetary compensations.

The Plaintiffs were successfully represented by Smart & Biggar litigators François Guay, Guillaume Lavoie Ste-Marie and Denise Felsztyna.

Background

The Plaintiffs Angelcare Canada Inc., Edgewell Personal Care Canada ULC and Playtex Products LLC (the "Plaintiffs" or "Angelcare") commercialize the well-known Diaper Genie diaper disposal system in Canada, which involves a reusable diaper pail and a disposable refill that contains the bag used by the system. A number of patents cover the Diaper Genie system, including the pail, the refills, or their combination. The Plaintiffs, at one point or another, have owned or been licensed to use the patents.

In 2012, Munchkin began selling refills specifically designed to be compatible with the Diaper Genie system. Over time, Munchkin sold four different generations of refills, and eventually its own diaper pail system...