Edgewell Personal Care Brands v. Munchkin, Inc. ( 2021 )

Case: 20-1203 Document: 53 Page: 1 Filed: 05/26/2021
United States Court of Appeals
for the Federal Circuit
______________________
EDGEWELL PERSONAL CARE BRANDS, LLC,
INTERNATIONAL REFILLS COMPANY, LTD.,
Plaintiffs-Appellants
v.
MUNCHKIN, INC.,
Defendant-Appellee
______________________
2020-1203
______________________
Appeal from the United States District Court for the
Central District of California in No. 2:18-cv-03005-PSG-
JPR, Judge Philip S. Gutierrez.
______________________
OPINION ISSUED: March 9, 2021
OPINION MODIFIED: May 26, 2021*
______________________
KIRK T. BRADLEY, Alston & Bird LLP, Charlotte, NC,
argued for plaintiffs-appellants. Also represented by
KEITH E. BROYLES, JAMES GRANT, JOSHUA MARK WEEKS,
Atlanta, GA.
TRAVIS W. MCCALLON, Lathrop GPM LLP, Kansas
City, MO, argued for defendant-appellee. Also represented
by LUKE MERIWETHER.
________________________________
* This opinion has been modified and reissued follow-
ing a petition for rehearing filed by Appellee.
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2 EDGEWELL PERSONAL CARE BRANDS v. MUNCHKIN, INC.
______________________
Before MOORE, Chief Judge**, NEWMAN and HUGHES,
Circuit Judges.
MOORE, Chief Judge.
Edgewell Personal Care Brands, LLC, and Interna-
tional Refills Company, Ltd. (collectively, Edgewell) sued
Munchkin, Inc. in the Central District of California for in-
fringement 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 pa-
tent at Abstract. As relevant to this appeal, Edgewell ac-
cused Munchkin’s Second and Third Generation refill
cassettes, which Munchkin marketed as being compatible
with Edgewell’s Diaper Genie-branded diaper pails, of in-
fringement. J.A. 18474.
In February 2019, the district court issued a claim con-
struction order, construing terms of both the ’420 patent
and the ’029 patent. Based on those constructions, Edge-
well continued to assert literal infringement of the ’420 pa-
tent, but only asserted infringement under the doctrine of
equivalents for the ’029 patent. Munchkin moved for, and
the district court granted, summary judgment of nonin-
fringement 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.
________________________________
** Chief Judge Moore assumed the position of Chief
Judge on May 22, 2021.
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EDGEWELL PERSONAL CARE BRANDS v. MUNCHKIN, INC. 3
DISCUSSION
We review a district court’s grant of summary judg-
ment under the law of the regional circuit, here, the Ninth
Circuit. Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353,
1356 (Fed. Cir. 2016). The Ninth Circuit reviews a district
court’s grant of summary judgment de novo. Greater Yel-
lowstone Coal. v. Lewis, 628 F.3d 1143, 1148 (9th Cir.
2010). “[O]n appeal from a grant of summary judgment of
non-infringement, we must determine whether, after re-
solving reasonable factual inferences in favor of the pa-
tentee, the district court correctly concluded that no
reasonable jury could find infringement.” Miken Compo-
sites, L.L.C. v. Wilson Sporting Goods Co., 515 F.3d 1331,
1336 (Fed. Cir. 2008).
I. The ’420 Patent
The ’420 patent is directed to a cassette with a “clear-
ance” located in a bottom portion of the cassette. See e.g.,
’420 patent at Abstract. The written description contem-
plates that the cassette may be placed into a pail with an
“interfering member” having “a shape that is complimen-
tary to that of the cassette 30 with the chamfer clearance.”
Id. at 8:40–43. The claimed “clearance” thereby purport-
edly prevents users from installing the cassette upside
down. Id. at 8:43–45. Claim 1 of the ’420 patent is illus-
trative and recites:
1. A cassette for packing at least one disposable ob-
ject, comprising:
an annular receptacle including an annular
wall delimiting a central opening of the an-
nular receptacle, and a volume configured
to receive an elongated tube of flexible ma-
terial radially outward of the annular wall;
a length of the elongated tube of flexible
material disposed in an accumulated
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4 EDGEWELL PERSONAL CARE BRANDS v. MUNCHKIN, INC.
condition in the volume of the annular re-
ceptacle; and
an annular opening at an upper end of the
cassette for dispensing the elongated tube
such that the elongated tube extends
through the central opening of the annular
receptacle to receive disposable objects in
an end of the elongated tube,
wherein the annular receptacle in-
cludes a clearance in a bottom portion
of the central opening, the clearance ex-
tending continuously from the annular
wall and radially outward of a downward
projection of the annular wall, the clear-
ance delimiting a portion of the volume
having a reduced width relative to a por-
tion of the volume above the clearance.
(emphasis added).
In its summary judgment order, the district court con-
cluded that the parties “dispute[d] whether the term ‘clear-
ance’ can cover circumstances where there is not actually
space between a cassette” and another structure when the
cassette is “normally positioned” in the pail. Summary
Judgment Decision, 2019 WL 7165917, at *7. There was
no dispute that the cassette itself (when not installed in the
pail) contained a clearance. Rather, the dispute focused on
whether the claims required a clearance space between the
annular wall defining the chamfer clearance and the pail
itself when the cassette was installed. The district court
determined that “clearance” required space after cassette
installation and construed clearance as “the space around
[interfering] members that remains (if there is any), not
the space where the interfering member or cassette is itself
located upon insertion.” Id. at *8.
Based on that construction, the district court granted
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EDGEWELL PERSONAL CARE BRANDS v. MUNCHKIN, INC. 5
Munchkin summary judgment of noninfringement of the
’420 patent. The court concluded that there was no space
between the cassette and the pail after the cassette was in-
stalled. Id. Edgewell challenges this determination on ap-
peal, arguing that the district court erred in its summary
judgment claim construction of “clearance.” Id. at *7.
As an initial matter, Munchkin argues that we cannot
review the court’s summary judgment claim construction
because it is the same as the district court’s original con-
struction of “clearance,” which Edgewell does not dispute
on appeal. We do not agree. As the district court recog-
nized, its summary judgment order resolved a further
claim construction dispute between the parties, adding a
limitation not present in the original construction. Sum-
mary Judgment Decision, 2019 WL 7165917, at *7. The
district court’s original construction required only that the
clearance prevent interference between the cassette and
another structure; it did not require space between the cas-
sette and the unclaimed structure after the cassette was
installed. The district court’s clarification that the “clear-
ance” cannot be filled by an unclaimed interfering member,
therefore, constitutes a separate claim construction subject
to our review.
We review a district court’s claim construction de novo
except for underlying factual findings based on extrinsic
evidence, which we review for clear error. Teva Pharm.
USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 321–22, 332 (2015).
An apparatus claim is generally to be construed according
to what the apparatus is, not what the apparatus does. See
Hewlett–Packard Co. v. Bausch & Lomb Inc., 909 F.2d
1464, 1468 (Fed. Cir. 1990) (“apparatus claims cover what
a device is, not what a device does” (emphases in original)).
Thus, it is usually improper to construe non-functional
claim terms in apparatus claims in a way that makes in-
fringement or validity turn on the way an apparatus is
later put to use. See Paragon Sols., LLC v. Timex Corp.,
566 F.3d 1075, 1091 (Fed. Cir. 2009) (“Construing a non-
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6 EDGEWELL PERSONAL CARE BRANDS v. MUNCHKIN, INC.
functional term in an apparatus claim in a way that makes
direct infringement turn on the use to which an accused
apparatus is later put . . . is inconsistent with the notice
function central to the patent system.”).
The parties do not dispute that the ’420 patent claims
are directed only to a cassette. Therefore, absent an ex-
press limitation to the contrary, the term “clearance”
should be construed as covering all uses of the claimed cas-
sette. See id.; see also Catalina Mktg. Int’l, Inc. v. Coolsav-
ings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) ( “a patent
grants the right to exclude others from making, using, sell-
ing, offering to sale, or importing the claimed apparatus or
composition for any use of that apparatus or composition”).
The specification discloses multiple embodiments which
discuss the cassette clearance. In one embodiment, “[i]t is
observed that the movable portion 58 passes closely to the
wall defining the chamfer clearance 41.” ’420 patent at
6:36–38. The term “passes closely” suggests that there
would still be a space where the clearance is located even
after the cassette is inserted into the pail. There are mul-
tiple other embodiments which suggest there would be no
space after insertion (i.e., that the clearance space would
be filled by a complimentary structure in the pail itself).
See e.g., ’420 patent at 3:5–9 (“[T]he tubular wall tapers in
a downward direction, and the annular body has a corre-
sponding frustoconical outer periphery for complementary
engagement of the cassette in the holder.”); 8:5–11 (“The
tapered clearance 41’ is used in conjunction with a tapered
flange 44’ in the holder 26 of the apparatus 10, as is clearly
illustrated in FIG. 4 (i.e., the flange 44’ defines an interfer-
ence member of frustoconical shape). Accordingly, this
complimentary shape ensures that the cassette 30’ is
properly oriented in the holder 26, otherwise the funnel 25
could not be installed properly on the top of the bin 12.”);
8:40–45 (“[T]he holder 26 features an interfering member
70 that has a shape that is complementary to that of the
cassette 30 with the chamfer clearance 41.”). In nearly all
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EDGEWELL PERSONAL CARE BRANDS v. MUNCHKIN, INC. 7
of the disclosed embodiments, the specification suggests
that the cassette clearance mates with a complimentary
structure in the pail such that there is “engagement.” The
specification, taken as a whole, does not support the dis-
trict court’s construction which would preclude such en-
gagement when the cassette is inserted into the pail. The
purpose of the clearance in the bottom of the central open-
ing in the cassette is “to ensure that the cassette 30 is
properly installed in the holder 26 when the apparatus 10
is in use.” Id. at 5:14–15; see also id. at 6:38–44 (“If the
chamfer clearance 41 were not provided, the cassette 30
would impede the movement of the movable portion 58. Ac-
cordingly, if the cassette 30 were installed upside down, the
movable portion 58 would be prevented from moving along
its path. Therefore, if a user person wants to use the cas-
sette 30 properly, the cassette 30 must be oriented
properly.”); 8:9–11 (“[T]his complimentary shape ensures
that the cassette 30’ is properly oriented in the holder 26,
otherwise the funnel 25 could not be installed properly on
the top of the bin 12.”). The cassette has a clearance that
will ensure proper insertion whether a space remains after
insertion or not. We thus conclude that the district court
erred by adding this limitation into its construction. The
clearance limitation is satisfied when the cassette itself is
constructed with a clearance. The claim does not require a
clearance after insertion; in fact, such a requirement would
be at odds with many of the disclosed embodiments and is
simply not required by the claims.
Accordingly, we hold that the district court erred in
construing the term “clearance” on summary judgment in
a manner dependent on the way the claimed cassette is put
to use in an unclaimed structure. See Paragon Sols., 566
F.3d at 1091. Because we hold that the district court erred
in its construction of the term “clearance,” we vacate the
district court’s grant of summary judgment of noninfringe-
ment of the ’420 patent and remand.
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8 EDGEWELL PERSONAL CARE BRANDS v. MUNCHKIN, INC.
II. The ’029 Patent
The ’029 patent is directed to a cassette with a cover
extending over pleated tubing housed therein. ’029 patent
at Abstract. The cover includes a “tear-off” section that,
when torn-off, leaves a peripheral gap to allow access to the
pleated tubing. Id. at 1:63–67. Claim 1 of the ’029 patent
is illustrative and recites:
1. A cassette for use in dispensing a pleated tub-
ing comprising:
an annular body having a generally U
shaped cross-section defined by an inner
wall, an outer wall and a bottom wall join-
ing a lower part of said inner and outer
walls, said walls defining a housing in
which the pleated tubing is packed in lay-
ered form;
an annular cover extending over said
housing; said cover having an inner
portion extending downwardly and en-
gaging an upper part of said inner
wall of said body and a top portion ex-
tending over said housing; said top
portion including a tear-off outwardly
projecting section having an outer
edge engaging an upper part of said
outer wall of said annular body; said
tear-off section, when torn-off, leaving a pe-
ripheral gap to allow access and passage of
said tubing therebetween; said down-
wardly projecting inner portion having an
inclined annular area defining a funnel to
assist in sliding said tubing when pulled
through a central core defined by said inner
wall of said body; and
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EDGEWELL PERSONAL CARE BRANDS v. MUNCHKIN, INC. 9
cooperating inter-engagement means on
said upper part of said body and on oppo-
site edges of said cover to lock said cover to
said body.
(emphasis added).
The district court construed “annular cover” as “a sin-
gle, ring-shaped cover, including at least a top portion and
an inner portion that are parts of the same structure.” J.A.
12. It construed “tear-off outwardly projecting section” as
“a section initially formed as part of the same structure as
the rest of the annular cover [and] which can be torn off”
from the cover. J.A. 12–13. Lastly, it construed “en-
gage”/“engaging” to mean “attach”/“attached to.” J.A. 13–
14.
Munchkin’s accused Second and Third Generation cas-
settes each include a two-part cover. The accused annular
cover of the Second Generation cassettes includes an inner
piece of molded plastic and an outer piece of shrink wrap
that is designed to be torn off by the user before installing
the cassette. Munchkin’s Third Generation cassettes like-
wise include an inner piece of molded plastic but use a plas-
tic “blister cap” instead of shrink wrap. Therefore, after
the district court construed “annular cover” and “tear-off”
section as being part of the same structure, Edgewell lim-
ited its infringement allegation of the ’029 patent to the
doctrine of equivalents. In granting Munchkin summary
judgment of noninfringement, the district court deter-
mined that no reasonable jury could find that Munchkin’s
Second and Third Generation Cassettes satisfy the ’029 pa-
tent’s “annular cover” and “tear-off section” limitations un-
der the doctrine of equivalents because that “would
effectively vitiate the ‘tear-off section’ limitation.” Sum-
mary Judgment Decision, 2019 WL 7165917, at *5. Edge-
well challenges this determination on appeal, arguing that
(1) the district court erred in construing the terms “annular
cover,” “tear-off section,” and “engage” and that (2) even
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10 EDGEWELL PERSONAL CARE BRANDS v. MUNCHKIN, INC.
under the district court’s constructions, the district court
erred in holding that the doctrine of equivalents would vi-
tiate the claim elements.
We hold that the district court correctly construed “an-
nular cover” and “tear-off section” as part of a single struc-
ture. The claims recite “an annular cover” having “an inner
portion” and a “top portion” that includes a tear-off “sec-
tion.” See, e.g., ’029 patent at claim 1. The plain language
of the claims, therefore, supports construing the annular
cover as a single-structure comprising multiple “portions”
or “sections.” The written description likewise supports the
court’s construction, describing the claimed cassette as
having two parts: an “annular body” and an “annular
cover.” See id. at 2:30–40, 51–56; see also id. at Fig. 1 (de-
picting the annular cover as a single structure). We see no
error in the district court’s construction of “annular cover”
and “tear-off section” as part of a single structure.
The district court also correctly construed “engage” to
mean “attach.” The claims recite an “annular cover . . .
having an inner portion extending downwardly and engag-
ing an upper part of said inner wall of said body.” Id. at
claim 1. As Edgewell acknowledges, the plain language of
the claim requires more than mere contact; it requires at
least meaningful contact or connection. Appellant’s Reply
Br. 30. The written description likewise requires some
form of attachment, describing the annular body as “lock-
ingly engaged” or “snappingly engag[ed]” to the annular
cover. ’029 patent at 3:36–40. We see no error in the dis-
trict court’s construction of “engage” to mean “attach.”
We agree with Edgewell, however, that the district
court erred in granting summary judgment of noninfringe-
ment 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
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EDGEWELL PERSONAL CARE BRANDS v. MUNCHKIN, INC. 11
it renders a claim limitation inconsequential or ineffec-
tive.” 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 “ef-
fectively 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 de-
termine 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 the-
ory 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 “annu-
lar 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 mean-
ingless the “annular cover” claim element. Vitiation has
its clearest application “where the accused device con-
tain[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 ‘an-
tithesis’ 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.”).
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12 EDGEWELL PERSONAL CARE BRANDS v. MUNCHKIN, INC.
Applying these concepts to the facts of this case, we con-
clude that the district court erred in evaluating this ele-
ment 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 substan-
tially 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 infringe-
ment under doctrine of equivalents to a “binary choice be-
tween ‘flourinated’ and ‘non-flourinated’ microchannels”
was improper where a reasonable juror could have found
negligibly-flourinated microchannel performed substan-
tially the same function).
The element at issue is the claimed “annular cover.”
Edgewell’s expert, Mr. Jobin, opined that the accused prod-
ucts’ annular covers perform the same function, in the
same way, to achieve the same result as the claimed annu-
lar cover. 1 J.A. 2300–01 (discussing the Second Generation
cassettes); J.A. 2316–17 (discussing the Third Generation
cassettes). Specifically, he opined that the annular cover
of Munchkin’s Second Generation cassettes provides the
same function by extending over the housing of the pleated
tubing while still providing a means of access thereto. J.A.
2300. He opined that it performs the function in the same
way, as it “is comprised of a plastic portion that engages
the inner wall [of the annular body], and shrink-wrap that
engages the outer wall and may be torn-off.” J.A. 2301. He
also opined that the result is the same because “when the
shrink-wrap is torn off of the housing, a peripheral gap is
1 The expert opined that the accused cassettes per-
form the same function-way-result, even though the doc-
trine of equivalents analysis requires only that they be
substantially the same.
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EDGEWELL PERSONAL CARE BRANDS v. MUNCHKIN, INC. 13
exposed that allows the tubing to be accessed and with-
drawn from the housing through the peripheral gap.” Id.This testimony, see J.A. 2300–01, sufficed to create a ques-
tion of fact precluding summary judgment as to the annu-
lar cover and whether the shrink wrap engages the outer
annular wall of the Second Generation cassettes.
Likewise, Mr. Jobin opined that the annular cover of
Munchkin’s Third Generation cassettes performs the same
function as the claimed annular cover because the accused
cover “extends over the annular housing and retains the
pleated tubing stored within, but still allows for access to
the pleated tubing.” J.A. 2317. He opined that it performs
the function in the same way, because it “is comprised of a
plastic portion that engages the inner wall, and a blister
cap that engages the outer wall and may be torn-off.” Id.He also opined that the function is the same because “when
the blister cap is torn-off of the housing, a peripheral gap
is exposed that allows the tubing to be accessed and with-
drawn from the housing.” Id. Edgewell also presented
Munchkin fact witness deposition testimony to support Mr.
Jobin’s opinions. See, e.g., J.A. 3464–65 (testimony that the
blister cap and shrink wrap “keeps the consumer from
touching it or pulling out the film” and that consumers
“have to remove the packaging to access” the tubing); see
also J.A. 2300–01 (Jobin Expert Report citing Munchkin
fact witness deposition testimony); J.A. 2316–17 (same).
This detailed application of the function-way-result
test, supported by deposition testimony from Munchkin
employees, is sufficient to create a genuine issue of mate-
rial fact for the jury to resolve and, therefore, is sufficient
to preclude summary judgment of noninfringement under
the doctrine of equivalents. Accordingly, we reverse the
district court’s judgment of noninfringement of the ’029 pa-
tent and remand for further proceedings consistent with
our opinion.
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14 EDGEWELL PERSONAL CARE BRANDS v. MUNCHKIN, INC.
CONCLUSION
Because the district court based its grant of summary
judgment of noninfringement of the ’420 patent on an erro-
neous 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.
VACATED-IN-PART, REVERSED-IN-PART, AND
REMANDED
COSTS
Costs to Edgewell.