Edgewell Personal Care Brands LLC v. Munchkin Inc

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Edgewell Personal Care Brands, LLC (Delaware) and International Refills Company Ltd. (Barbados)
  • Defendant: Munchkin, Inc. (Delaware)
  • Plaintiff’s Counsel: McCormick, Paulding, & Huber LLP; Alston & Bird LLP
• Case Identification: 3:16-cv-00094, D. Conn., 05/09/2017
• Venue Allegations: Venue is asserted in the District of Connecticut based on allegations that Defendant has purposefully directed its activities at residents of the state and has committed acts of infringement within the state.
• Core Dispute: Plaintiff alleges that Defendant’s compatible diaper pail refill cassettes infringe patents related to cassette construction, including features for ensuring proper orientation within a diaper pail and for smoothly dispensing plastic tubing.
• Technical Context: The technology involves disposable cassettes for diaper pail systems, which contain a long, continuous tube of plastic film used to individually seal soiled diapers to control odor.
• Key Procedural History: The complaint alleges a history of litigation between the parties, including a prior complaint filed with the International Trade Commission (ITC) in January 2016. Notably, it alleges that Defendant filed two petitions for Inter Partes Review (IPR) seeking to invalidate the ’420 Patent, and that the U.S. Patent and Trademark Office (USPTO) denied institution of both petitions, thereby declining to review the patent's validity.

Case Timeline

Date	Event
2001-12-31	'029 Patent Priority Date
2005-12-13	'029 Patent Issue Date
2007-10-05	'420 Patent Priority Date
2014-03-01	Approximate date of Diaper Genie product design change
2014-12-02	'420 Patent Issue Date
2016-01-21	Prior ITC Complaint and Original District Court Complaint Filed
2016-06-03	First IPR Petition on '420 Patent Filed
2016-10-11	Second IPR Petition on '420 Patent Filed
2016-12-12	USPTO Denies Institution of First IPR Petition
2017-04-03	USPTO Denies Institution of Second IPR Petition
2017-05-09	First Amended Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,899,420 - Cassette and Apparatus for Packing Disposable Objects Into an Elongated Tube of Flexible Material

• Patent Identification: U.S. Patent No. 8,899,420, "Cassette and Apparatus for Packing Disposable Objects Into an Elongated Tube of Flexible Material," issued December 2, 2014.

The Invention Explained

• Problem Addressed: The patent describes prior art diaper disposal systems as having disadvantages such as being complex, prone to breakage, and not user-friendly, noting that some can cause "confusion in their installation, causing improperly oriented cassettes" ('420 Patent, col. 2:5-15).
• The Patented Solution: The invention is a diaper pail refill cassette with a specific physical geometry that acts as a keying feature. It includes a "clearance" at the bottom of the cassette's central opening, which is designed to interact with the structure of the corresponding diaper pail ('420 Patent, Abstract). This interaction ensures the cassette can only be installed in the correct orientation; if a user attempts to install it upside-down, the cassette's structure will physically interfere with the pail's components, preventing improper installation and ensuring the system's odor-sealing mechanisms function correctly ('420 Patent, col. 6:35-51).
• Technical Importance: This design aims to improve usability and system reliability by mistake-proofing the installation of the refill cassette, a critical and frequently replaced component. ('420 Patent, col. 2:8-15).

Key Claims at a Glance

• The complaint asserts independent claims 1, 6, and 11, and dependent claims 2-5, 7-10, and 12-17 (Compl. ¶22).
• Independent Claim 1 recites:
  • A cassette for packing at least one disposable object,
  • comprising an annular receptacle with an annular wall defining a central opening and a volume to receive an elongated tube of flexible material,
  • a length of the elongated tube disposed in the volume,
  • an annular opening at the upper end for dispensing the tube through the central opening,
  • wherein the annular receptacle includes a "clearance in a bottom portion of the central opening," which extends from the annular wall and delimits a portion of the volume with a "reduced width."

U.S. Patent No. 6,974,029 - Cassette for Dispensing Pleated Tubing

• Patent Identification: U.S. Patent No. 6,974,029, "Cassette for Dispensing Pleated Tubing," issued December 13, 2005.

The Invention Explained

• Problem Addressed: The patent seeks to provide a "novel cassette" for dispensing pleated tubing, implicitly addressing the need for the tubing to be dispensed smoothly without tearing or snagging ('029 Patent, col. 1:36-41).
• The Patented Solution: The invention is a cassette constructed with an annular body and a separate annular cover or flange. A key feature of the cover is an "inclined annular area defining a funnel" ('029 Patent, col. 4:32-34). As the user pulls the plastic tubing from its packed state within the cassette, this funnel-like surface guides the film smoothly downward into the central core, facilitating reliable dispensing ('029 Patent, col. 2:50-54; Fig. 2).
• Technical Importance: The claimed design provides a simple mechanical means to enhance the primary function of the product—the consistent and trouble-free dispensing of flexible film needed to create bags. ('029 Patent, col. 1:39-41).

Key Claims at a Glance

• The complaint asserts independent claim 1 and dependent claims 2, 4, 6, and 7 (Compl. ¶32).
• Independent Claim 1 recites:
  • A cassette for dispensing pleated tubing,
  • comprising an annular body with a U-shaped cross-section defining a housing for the tubing,
  • an annular cover extending over the housing,
  • the cover including a "tear-off outwardly projecting section" which, when removed, leaves a gap for the tubing to pass,
  • the cover’s downwardly projecting inner portion having an "inclined annular area defining a funnel to assist in sliding said tubing" through the central core,
  • and "cooperating inter-engagement means" to lock the cover to the body.

III. The Accused Instrumentality

Product Identification

The accused products are diaper pail refill cassettes manufactured, imported, and sold by Munchkin under various brand names, including "Nursery Fresh," "Up & Up," and "Comforts for Baby" (Compl. ¶¶ 9, 14, 17). The complaint references an image of an accused "nursery fresh" branded cassette (Compl. p. 6).

Functionality and Market Context

The complaint alleges that the accused cassettes are "specifically designed for use with Plaintiff Edgewell’s Diaper Genie® System" and function as direct replacements for Plaintiff's own branded cassettes (Compl. ¶14). They contain a supply of pleated plastic film that is dispensed to form a continuous liner for wrapping soiled diapers inside a Diaper Genie pail (Compl. ¶¶ 11-12). The complaint distinguishes between "current" and "old" versions of the accused products, noting the different versions were designed to accommodate changes made to the Diaper Genie system around March 2014 (Compl. ¶17, fn 1). The complaint includes an image showing a cassette installed within the top of a Diaper Genie pail (Compl. p. 5).

IV. Analysis of Infringement Allegations

The complaint states that claim charts demonstrating infringement are attached as exhibits (Compl. ¶¶ 23, 33); however, these exhibits were not included in the provided document. The analysis below summarizes the infringement allegations from the body of the complaint in prose, as a claim chart cannot be constructed.

'420 Patent Infringement Allegations

The complaint alleges that Munchkin's "Current" and "Old" versions of its diaper pail refills directly infringe claims 1-17 of the ’420 Patent (Compl. ¶22). The infringement theory appears to be based on the physical structure of the accused cassettes. It would necessarily allege that the accused products are "cassettes" that contain all the structural elements of the asserted claims, most critically the "clearance in a bottom portion of the central opening" that functions as a keying feature. The separate identification of "Current" and "Old" infringing products raises the possibility that the infringement analysis may differ based on design changes in the accused cassettes over time (Compl. ¶17, fn 1).

'029 Patent Infringement Allegations

The complaint alleges that Munchkin's "individually packaged Current Diaper Pail Refills" directly infringe claims 1, 2, 4, 6, and 7 of the ’029 Patent (Compl. ¶32). The infringement theory appears to center on the structure of the top or cover portion of the accused cassettes. It would allege that the accused cassettes have an "annular cover" with an "inclined annular area defining a funnel" that guides the plastic film during dispensing, as required by claim 1. The allegation would also extend to the other features of the claim, such as the "tear-off" section and the means for locking the cover to the cassette body.

Identified Points of Contention

• Technical Questions: A primary technical question for the ’420 Patent will be whether the physical geometry at the bottom of the accused Munchkin cassettes constitutes a "clearance" as defined by the claims. This will likely involve a detailed analysis of the product's shape and dimensions to determine if it is "radially outward of a downward projection of the annular wall" and creates a "reduced width" in the packed tubing volume. For the ’029 Patent, a key question will be whether the top surface of the accused cassettes has a geometry that can be properly characterized as an "inclined annular area defining a funnel" whose purpose is to "assist in sliding" the tubing.
• Scope Questions: The infringement analysis for the ’420 Patent may turn on the interpretation of "clearance." The court will have to determine if this term is limited to structures that perform the anti-inversion keying function described in the specification, or if it can read on any structure that meets the claim's geometric definition. Similarly, for the ’029 Patent, the scope of "funnel" will be at issue: does it require a distinct, concave structure as shown in patent figures, or can it encompass any generally sloped surface that guides the film?

V. Key Claim Terms for Construction

’420 Patent: "clearance"

• Context and Importance: This term appears to be the central inventive concept of the ’420 Patent, serving as the keying feature to prevent improper installation. The outcome of the infringement analysis for this patent will likely depend heavily on the construction of "clearance" and whether the accused product's structure falls within that definition.
• Intrinsic Evidence for a Broader Interpretation: The claims use the general term "clearance," while the specification provides a "chamfer" as a specific example ('420 Patent, col. 2:33), which may support an interpretation that the claim is not limited to chamfers alone.
• Intrinsic Evidence for a Narrower Interpretation: A party may argue that the term must be read in light of the problem solved and the function described. The specification repeatedly links this feature to preventing improper installation by interacting with the pail's closing mechanism ('420 Patent, col. 6:35-51). This could support an argument that "clearance" is limited to structures that are capable of performing this specific keying function.

’029 Patent: "inclined annular area defining a funnel"

• Context and Importance: This term describes the feature intended to provide smooth dispensing of the plastic film. Practitioners may focus on this term because the infringement dispute will likely involve a debate over whether the specific contours of the accused cassette's top surface meet this functional and structural definition.
• Intrinsic Evidence for a Broader Interpretation: The language itself is descriptive, and a party could argue that any sloped or angled annular surface on the cassette's cover that helps guide the tubing meets the definition.
• Intrinsic Evidence for a Narrower Interpretation: The specification describes and illustrates a "funnel shaped inner area 27b" as a distinct part of the top portion ('029 Patent, col. 2:52-53; Fig. 2). A party may argue that the term requires a specific, concave funnel-like structure, not merely any surface that happens to be sloped.

VI. Other Allegations

Willful Infringement

The complaint alleges that Munchkin’s infringement of both the ’420 and ’029 patents has been and continues to be willful and deliberate (Compl. ¶¶ 26, 35). The basis for this allegation is Munchkin's alleged knowledge of the patents and its infringement since at least January 21, 2016, the date of prior ITC and district court filings (Compl. ¶¶ 24, 34). For the ’420 Patent, the complaint further supports the willfulness claim by citing Munchkin’s continued infringement even after the USPTO denied its two IPR petitions challenging the patent's validity (Compl. ¶¶ 25-26).

VII. Analyst’s Conclusion: Key Questions for the Case

• A core issue will be one of structural identity: does the geometry at the base of Munchkin's accused cassettes meet the specific dimensional and relational requirements of the "clearance" limitation in the ’420 patent? The resolution will likely depend on whether the feature functions as the anti-inversion keying mechanism described in the patent's specification.
• A second key issue will be one of functional construction: can the term "inclined annular area defining a funnel" from the ’029 patent be construed to cover the top surface of the accused cassettes, or is the term limited by the patent's disclosure to a more distinct, concave structure as depicted in the embodiments?
• A significant legal question will concern willfulness: given the explicit allegations of pre-suit knowledge from prior litigation and the USPTO's denial of two separate IPR institution petitions for the ’420 patent, a central issue for the court will be to evaluate whether Munchkin's continued commercial activity rises to the level of objective recklessness required for enhanced damages.