998 F.3d 917
Fed. Cir.2021Background
- Edgewell (maker of Diaper Genie) sued Munchkin alleging infringement of U.S. Pat. Nos. 8,899,420 ("'420") and 6,974,029 ("'029") relating to cassette designs used inside diaper pails.
- The '420 patent claims a cassette with a ‘‘clearance’’ in the bottom of its central opening; the '029 patent claims a cassette with an "annular cover" having a "tear-off" section exposing pleated tubing.
- The district court construed "clearance" to require remaining space after the cassette is installed in the pail, and construed "annular cover"/"tear-off" as a single-piece structure; it also construed "engage" to mean "attach."
- Based on those constructions the district court granted summary judgment of noninfringement for both patents (literal for '420; doctrine of equivalents for '029).
- On appeal the Federal Circuit: (1) held the district court erred by adding a post-installation-space requirement to "clearance," vacated summary judgment as to the '420 patent and remanded; and (2) affirmed the constructions for the '029 patent but reversed summary judgment because a triable issue existed under the doctrine of equivalents (function-way-result evidence), and remanded.
- The Federal Circuit awarded costs to Edgewell.
Issues
| Issue | Plaintiff's Argument (Edgewell) | Defendant's Argument (Munchkin) | Held |
|---|---|---|---|
| Construction of "clearance" in '420 claim: does the claim require space after cassette installation? | "Clearance" is a structural feature of the cassette and is satisfied by the cassette's geometry; it need not leave open space after installation. | "Clearance" requires remaining space between cassette and pail when installed; otherwise the limitation is not met. | Court held district court erred adding a post-installation-space requirement; "clearance" covers the cassette feature itself; vacated SJ and remanded. |
| Construction of "annular cover" and "tear-off section" in '029: are they a single structure, and does "engage" mean "attach"? | (Edgewell accepted plain meaning that cover has portions but argued equivalence could capture multi-part accused covers.) | Argued the claim requires a single-piece annular cover and tear-off as part of that same structure; accused two-piece covers do not meet claim. | Court affirmed constructions: "annular cover" and "tear-off" are parts of a single structure; "engage" means "attach." |
| Doctrine of equivalents / vitiation for '029: can the accused multi-part covers be equivalents or would that vitiate the claimed single-structure limitation? | Accused two-piece covers perform substantially the same function in substantially the same way to achieve substantially the same result; expert and witness evidence create triable issue under FWR test. | Allowing DOE would vitiate the single-piece "tear-off" limitation and read it out of the claim. | Court held DOE argument not foreclosed by vitiation at summary judgment; sufficient FWR evidence existed to create a jury issue. Reversed SJ and remanded. |
Key Cases Cited
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015) (review standard: claim construction review de novo except for extrinsic-fact findings reviewed for clear error)
- Paragon Sols., LLC v. Timex Corp., 566 F.3d 1075 (Fed. Cir. 2009) (apparatus claims generally construed according to what the device is, not how it is used)
- Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002) (patent grants exclusionary rights for making/using claimed apparatus for any use)
- Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997) (doctrine of equivalents limits; vitiation concern)
- Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349 (Fed. Cir. 2012) (vitiation is a legal determination whether no reasonable jury could find equivalence)
- Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334 (Fed. Cir. 2016) (DOE fails if it renders a claim limitation inconsequential or ineffective)
- Bio-Rad Labs., Inc. v. 10X Genomics, Inc., 967 F.3d 1353 (Fed. Cir. 2020) (doctrine of equivalents requires application of function-way-result test; avoid binary present/not-present framing)