Angelcare And Playtex Take Out The Trash: Diaper Genie Patents Are Valid And Infringed By Munchkin

• Published date: 21 April 2022
• Subject Matter: Consumer Protection, Intellectual Property, Consumer Law, Patent
• Law Firm: Smart & Biggar
• Author: Mr Guillaume Lavoie Ste-Marie, Denise Felsztyna and Matthew Burt

On April 7, 2022, the Federal Court issued its judgment and reasons in Angelcare Canada Inc et al v Munchkin Inc et al (2022 FC 507), finding that Munchkin, Inc and Munchkin Baby Canada Ltd (the "Defendants" or "Munchkin") had infringed numerous valid patents owned by Angelcare Canada Inc related to their diaper disposal system sold under the brand name "Diaper Genie".

In addition to providing relief for the patent owners, the Federal Court's comprehensive decision covered a lot of ground on various infringement and invalidity principles, providing clarity for patent owners in the competitive consumer products space.

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

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 disposal system in Canada. The Diaper Genie system involves a reusable diaper pail and a disposable refill that contains the bag used by the system. Angelcare owns a number of patents covering the Diaper Genie system related to the pail, refill, or their combination.

In 2012, Munchkin started selling refills that were specifically designed to be compatible with the Diaper Genie system. Over time, Munchkin sold four models of refills, and eventually also sold its own diaper pail system compatible with its refills.

In 2016, Angelcare launched an action for patent infringement against Munchkin with regard to six Canadian patents: 2,640,384, 2,855,159, 2,936,415, 2,936,421, 2,937,312, and 2,686,128. Munchkin in turn counterclaimed alleging that the patents-in-suit were all invalid.

The Federal Court ruled in favour of the Plaintiffs, confirming that the Defendants' first three refill models directly infringe certain claims, and that all four refill models infringe additional claims when combined with select pails of the Plaintiffs and/or of the Defendants. Only four claims of one of the patents were held to be anticipated, and all other claims were held to be valid despite the various invalidity arguments raised by the Defendants.

Key findings of the Federal Court

POSITA

As is true for all patent litigations, claim construction is done through the eyes of the person of ordinary skill in the art in the field to which the patent relates (POSITA). While this fictitious person has the qualifications...