Angelcare Canada Inc. v. Munchkin Inc.

Angelcare Canada Inc. v. Munchkin, Inc.
Court (s) Database
Federal Court Decisions
Date
2022-06-24
Neutral citation
2022 FC 507
File numbers
T-151-16
Notes
Digest
Decision Content
Date: 20220624
Docket: T-151-16
Citation: 2022 FC 507
Ottawa, Ontario, June 24, 2022
PRESENT: The Honourable Mr. Justice Roy
BETWEEN:
ANGELCARE CANADA INC.
AND
EDGEWELL PERSONAL CARE CANADA ULC
AND
PLAYTEX PRODUCTS, LLC
Plaintiffs/
Defendants by counterclaim
and
MUNCHKIN, INC.
AND
MUNCHKIN BABY CANADA, LTD.
Defendants/
Plaintiffs by counterclaim
Contents
I. Introduction 4
A. The Parties 6
(1) The Plaintiffs and the Evolution of Angelcare’s Corporate Structure 6
(2) The Defendants 8
B. The Alleged Infringing Products 9
(1) The Defendants’ Cassettes 9
(2) The Defendants’ Diaper Pails 15
(3) Infringement by Assembly: The Plaintiffs’ Products 17
II. The Patents 18
A. The 128 Patent 19
B. The Angelcare Patents 22
(1) History of the Angelcare Patents’ Invention 23
(2) Disclosure Common to All Angelcare Patents 27
(3) The Added Disclosure of the 159 Patent and Subsequent Divisionals (the 421, the 312, and the 415) 31
(4) The 384 Patent 32
(5) The 159 Patent 33
(6) The 421 Patent 34
(7) The 415 Patent 34
(8) The 312 Patent 35
III. Claims Construction 36
A. The Person of Ordinary Skill in the Art (POSITA) 36
B. Common General Knowledge 40
C. Claims Construction 43
(1) The 128 Patent 45
(a) “alignment features” 45
(b) “mating engagement” and “complementary/complimentary shapes” 48
(c) “recess” 50
(d) Whether the location of the film-dispensing gap in the cover of the patent is an essential element of the 128 Patent 51
(2) The Angelcare Patents 55
(a) “clearance” of the 384 and 421 Patents, “clearance means” of the 159 Patent, and “recessed area” of the 312 and 415 Patents 55
(b) “chamfer” and “shape of chamfer” of the 384, 421, and 159 Patents 58
(c) “integrally formed” of the 384, 159, and 421 Patents 60
(d) “moveable with relation to” or “moveable relative to” the bottom wall to gather the tube in the 312 and 415 Patents 60
(e) “projection” and “imaginary projection” of the 384, 159 and 421 Patents 62
(f) “projection”, projecting portion” and “projecting member” of the 159, 312, and 415 Patents 63
(g) “Transition wall” of the 159 and 421 Patents and “intermediate wall” of the 159 Patent 63
(h) “Convex edge portion” and “inwardly recessed portion” in the 159 and 421
Patents 64
(i) “Lid” of the 312 Patent 69
(j) “tubular wall” of the 159 and 421 Patents 70
IV. Infringement 73
A. The 128 Patent 74
(1) Independent Claim 11 74
(a) Alignment Features 76
(b) Mating engagement between registration features and alignment features 77
(c) Contribution to positioning the cassette upright in the receptacle 78
(d) Claim 11 Infringement Conclusion 80
(2) Dependent Claims 80
B. The 384 Patent 83
(1) Independent Claims 1 and 6 84
(2) Dependent Claims 2-10 88
C. The 159 Patent 88
(1) Independent Claims 1, 21, 40, 51, and 52 89
(a) Cassette with a clearance 94
(b) The clearance’s compatibility with a projection or projecting member in the holder of a diaper pail 96
(2) Dependent Claims 99
D. The 421 Patent 99
(1) Independent Claim 1 100
(2) Dependent Claims 102
E. The 312 Patent 104
F. The 415 Patent 109
G. Inducement 112
(1) Legal Test 113
(2) Application 115
H. Liability of Defendants Munchkin, Inc., the American Parent Company 125
V. Invalidity 126
A. Anticipation 126
(1) Legal Principles 126
(2) The Captiva/Diaper Genie II Cassette and the 128 Patent 133
(3) The 128 Patent and the Angelcare Patents 137
(a) The 384 Patent 137
(b) The 421 Patent 143
(c) The 159 Patent 147
(d) The 312 and 415 Patents 150
(e) Is the Disclosure by the 128 Patent enabling? 150
(4) Alleged Confidential Disclosure of Angelcare Cassettes by Mr. Morand 152
B. Obviousness 168
(1) Legal Principles 168
(2) Application 177
(a) Step One: The POSITA and their common general knowledge 177
(b) Step Two: The Inventive Concept of the Claims 185
(i) The 128 Patent 188
(ii) The 384 Patent 189
(iii) The 421 Patent 190
(iv) The 159 Patent 191
(v) The 415 Patent 192
(vi) The 312 Patent 193
(c) Step Three: Identifying the Gap between the “State of the Art” and the Inventive Concept 194
(i) The 128 Patent 194
(ii) The 384 Patent 196
(iii) The 421 Patent 199
(iv) The 159 Patent 199
(v) The 415 Patent 201
(vi) The 312 Patent 201
(d) Step Four: Bridging the Gap 201
(i) The 128 Patent 202
(ii) The 384 Patent 206
(iii) The 421 Patent 210
(iv) The 159 Patent 210
(v) The 415 Patent 213
(vi) The 312 Patent 215
C. Overbreadth 215
(1) Legal Principles 216
(2) Analysis 220
(a) The 384 and 421 Patents 220
(b) The 312 and 415 Patents 222
D. Sufficiency and Ambiguity 227
(1) Legal Principles 227
(2) Analysis 228
(a) The 415 and 312 Patents 228
(b) The 421 and 159 Patent 230
E. Utility 231
(1) Legal Principles 232
(2) Analysis 234
F. Double Patenting 236
VI. Publication date of the 312 Patent 237
VII. Conclusion 238
AMENDED JUDGMENT AND REASONS (Original Judgment and Reasons issued on April 7, 2022)
I. Introduction
[1] This is an action for infringement under the Patent Act, RSC 1985, c P-4 launched by Angelcare Development Inc., Edgewell Personal Care Canada ULD, Playtex Products, LLC and Angelcare Canada Inc. (“the Plaintiffs” or “Angelcare”) against Munchkin, Inc. and Munchkin Baby Canada, Ltd (“the Defendants” or “Munchkin”). The Defendants are in turn Plaintiffs by counterclaim, as they allege that the patents-in-suit are all invalid, invoking a number of grounds of invalidity.
[2] The parties are competitors in the Canadian and international markets of baby care products and, in particular, diaper pails and diaper pail cassettes (“cassette”). As the name would indicate, diaper pails are effectively garbage pails purposed for the disposal of soiled diapers. Diaper pail cassettes are used in tandem with diaper pails; the cassettes store plastic material, otherwise called plastic tubing or film, that acts as a garbage bag for soiled diapers. This material lines the interior of the diaper pail and facilitates the disposal of soiled diapers once the diaper pail is full.
[3] At issue is the infringement and validity of six patents, all relating to either diaper pail cassettes or assemblies between cassettes and the diaper pails with which they are used. The Plaintiffs seek a declaration that Canadian Patent Nos. 2,640,384 (“the 384 Patent”); 2,855,159 (“the 159 Patent”); 2,936,415 (“the 415 Patent”); 2,936,421 (“the 421 Patent”); 2,937,312 (“the 312 Patent”) and 2,686,128 (“the 128 Patent”) are owned by the Plaintiff Angelcare Canada Inc. and are valid and subsisting (the six patents are reproduced in an annex to these reasons for judgment). Moreover, the Plaintiffs seek a declaration that the Defendants have infringed, either directly or by inducement, each of these patents by the manufacture and sale of four generations of cassettes, as well as two types of diaper pails. The Defendants deny any infringement and counterclaim that all six patents are invalid on various grounds: anticipation, obviousness, overbreadth, insufficiency, lack of utility, and, in the alternative, double-patenting.
A. The Parties
(1) The Plaintiffs and the Evolution of Angelcare’s Corporate Structure
[4] Angelcare Development Inc. was incorporated pursuant to the Canada Business Corporations Act, RSC 1985, c C-44 (“CBCA”), with a place of business in Candiac, Quebec, Canada (Second Amended Agreed Statement of Facts (“ASF”), para 1). Until the amalgamation described at paragraph 10 below, Angelcare Development Inc. was in the business of baby-care products, which it developed, designed, manufactured, or has had others manufacture on its behalf and which it marketed in nearly 60 countries (Fifth Amended Statement of Claim (“SoC”), para 2; ASF, para 3).
[5] Angelcare Canada Inc. (“Old Angelcare”) was also incorporated pursuant to the CBCA, with a place of business in Candiac, Quebec, Canada. Until its amalgamation described at paragraph 10 below, it sold and distributed baby-care products in Canada (SoC, para 3.2).
[6] Edgewell Personal Care Canada ULC (“Edgewell Canada”) is incorporated pursuant to the laws of the province of British Columbia under the Business Corporations Act, SBC 2002, c 57, with a place of business in Vancouver, British Columbia, Canada (SoC, para 3; ASF, para 5). Until the asset acquisition described at paragraph 8 below, Edgewell Canada sold and distributed baby-care products in Canada, including diaper products under the Diaper Genie brand (Ibid; ASF, para 6).
[7] Playtex Products, LLC (“Playtex Products”) is incorporated under the laws of the state of Missouri, United States of America, with a place of business in Saint Louis, Missouri (SoC, para 3.1; ASF, para 7). Playtex Products is involved in this litigation insofar as it currently appears as one of the owners of the 128 Patent at issue (ASF, para 8). Playtex Products has requested that the Canadian Intellectual Property Office record the transfer of the 128 Patent to Angelcare as of December 7, 2020 (ASF, para 8). Playtex Products is also an affiliate of Edgewell Canada (ASF, para 9).
[8] On December 18, 2019, Angelcare Development Inc.’s parent company, Le Holding Angelcare Inc., purchased Playtex Products’ and Edgewell Canada’s parent’s assets related to the development and commercialising of their Diaper Genie line of products (SoC, para 3.3; ASF para 10). During this acquisition, Playtex Products assigned the 128 Patent to Old Angelcare. (ASF, para 62).
[9] Until the December 18, 2019 acquisition, Angelcare Development had cassettes marked under the Diaper Genie brand manufactured on its behalf and sold them to Edgewell or its corporate predecessors for distribution and sale in Canada (ASF, para 4). However, after December 18, 2019, Old Angelcare began to progressively take over Edgewell Canada’s commercial activities related to Diaper Genie products in Canada (ASF, paras 15-17). As of December 8, 2020, Edgewell no longer sold or had any commercial activities in Canada in relation to the Diaper Genie products (ASF, para 17). During the trial, the corporate representative for Angelcare, Mr. Doug Sweetbaum, testified that Angelcare now performs all activities related to the Diaper Genie line of products in Canada (Sweetbaum, Trial Transcripts (“TT”) Vol. 5, p. 73:4-22).
[10] On October 1, 2020, Angelcare Development Inc., Old Angelcare, and another corporate entity, Angelcare Monitors Inc., were amalgamated under the CBCA and continued under the name Angelcare Canada Inc. (“Angelcare”), with a place of business in Montreal, Quebec, Canada (ASF, para 13). All property held by these three former corporate entities, including the patents at issue, became the property of Angelcare (SoC, para 3.5). Angelcare continues to be liable for these former corporate entities’ obligations (Ibid). As such, Angelcare takes over from Angelcare Development Inc. and Old Angelcare the causes of actions, claims, and liabilities in the present litigation (Ibid). Subsequent to this amalgamation, the corporate entities Angelcare, Edgewell Canada, and Playtex Products became the Plaintiffs in this case.
(2) The Defendants
[11] The Defendant, Munchkin, Inc. (“Munchkin”) is incorporated pursuant to the laws of Delaware, United States of America, with a registered office in Van Nuys, California, United States of America (ASF, para 18). Munchkin sells baby-care products which are manufactured on its behalf, including diaper pails and cassettes (ASF, para 19; SoC, para 4).
[12] The Defendant, Munchkin Baby Canada Ltd. (“Munchkin Canada”), is a subsidiary of Munchkin (ASF, para 21). It initially incorporated pursuant to the CBCA, but was discontinued as a federal corporation on August 26, 2019 and continued this same date under British Columbia’s Business Corporations Act, with a registered place of business in Vancouver, British Columbia, Canada (ASF, para 20). Munchkin Canada distributes and sells baby-care products in Canada (ASF, para 22).
B. The Alleged Infringing Products
[13] The Plaintiffs allege that the Defendants have directly infringed their patents by having manufactured, on their behalf, and selling four generations of cassettes and two diaper pails, the PAIL and the STEP. Additionally, they allege that the Defendants have induced infringement by encouraging users to assemble the alleged infringing cassettes with both the Defendants’ own diaper pails and the Plaintiffs’ diaper pails.
(1) The Defendants’ Cassettes
[14] Munchkin began developing the First Generation cassette in January 2012, with the final design approved in August 2012 (ASF, para 66). Mr. Kevin Johnson, who testified at trial, was the lead designer for Munchkin on this project (Johnson, TT Vol. 20, p.53:22-25). He was tasked with the goal of designing a cassette that would fit inside, and function with, the Plaintiffs’ Diaper Genie pails (Ibid, p. 54:1-55:8; Dunn, TT Vol. 22, p. 14:23-27). To assist with this task, Mr. Johnson had access to Diaper Genie Elite and Essentials diaper pails and Diaper Genie cassettes at his office (Johnson, TT Vol. 21, p. 15:8-19:23). Mr. Steve Dunn, the CEO of Munchkin Inc., imposed a single constraint on Mr. Johnson’s design process: he asked Mr. Johnson to ensure his design did not infringe a patent relating to a tear-off strip on the cover of the Diaper Genie cassette (Ibid, pp. 28:6-29:28; Dunn, TT Vol. 22, pp. 14:23-15:5).
[15] Mr. Johnson identified three key features on the First Generation cassettes. One was the eight intermittent locks connecting the cassette lid to the cassette body. These are mechanical interfaces on the outer perimeter of the cassette with little underlocks that engage with the outer perimeter of the cover, connecting the cassette body to the cassette cover (Johnson, TT Vol. 20, pp. 55:24-56:9). The second was the twelve slots on the inner surface of the bottom of the cassette that help release air pressure when the cassette is being stuffed with film and reduced the amount of injection-moulded polypropylene material needed to manufacture the cassette (Ibid¸ 56:10-27). The third was the angled bottom of the cassette, which he believed would accommodate soiled diapers that might expand when being inserted into the diaper pail through the cassette’s central opening (Johnson, TT Vol. 20, p. 57:5-26). The film is dispensed from a gap closer to the central opening of the cassette’s cover than to the cover’s outer periphery, what has been referred to at times as an interior gap as opposed to an exterior gap.
[16] Munchkin’s First Generation cassettes became available in Canada under the Nursery Fresh label, a Munchkin brand, in August 2013 and under Target’s UP & UP private label brand in September 2013 (ASF, para 67). These cassettes were discontinued under the UP & UP label in January 2015 and under the Nursery Fresh label in September 2016, with the exception of the Generation 1 starter cassettes sold with the PAIL and STEP diaper pails (ASF, para 70). Until Munchkin launched its own PAIL and STEP diaper pails in March 2016, these cassettes were only compatible with the Plaintiffs’ Diaper Genie Essentials, Elite, Complete, Mini, and Expressions diaper pails (ASF, paras 69; 90).
[17] Munchkin began developing its Second Generation cassette in March 2014 (ASF, para 72). Mr. Johnson was again lead designer on this project and was tasked to make them compatible with the latest Diaper Genie pails, which had been recently redesigned (Johnson, TT Vol. 20, p. 71:19-73:5). The Plaintiffs’ Diaper Genie redesign consisted of the addition of “the snap-on ring” in February 2014 that made the First Generation Munchkin cassettes incompatible with the snap-on-ring of the Diaper Genie pails (ASF, paras 106-107). This snap-on ring raised the First Generation Munchkin cassettes too high up in the cassette’s holder and prevented the intermediate lid that normally covers the cassette from being shut properly (Johnson, TT Vol. 20, p. 71:19-73:5). Mr. Johnson made the Second Generation cassettes compatible with the Diaper Genie redesigned pails by changing the angle on the bottom of the cassette (Johnson, TT Vol. 20, p. 75:14-20). Another notable change was having the cassette’s cover attach to the inner diameter to the cassette, with the film dispensed closer to the outer wall of the cassette (outside gap), as well as recesses on the cover for users to insert their fingers and more easily grab the film (Ibid, pp. 74:25-75:13).
[18] The Second Generation cassettes became available in Canada in November 2015 and were only compatible with the Diaper Genie Essentials, Elite, Complete, Mini, and Expressions diaper pails until the launch of Munchkin’s PAIL and STEP diaper pails in November 2016 (ASF, paras 74; 90). The Second Generation cassettes were likely no longer available on the market as of February 5, 2020 (ASF, para 76).
[19] Munchkin’s Third Generation cassette was developed in early 2015 (ASF, para 78). Both Mr. Johnson and Mr. Dunn testified that the redesign from the second to the third generation was limited to the addition of a plastic blister cap which alters the packaging of the product without changing in any way the structural features of the cassette of the second generation (Johnson, TT Vol. 20, pp. 79:17- 81:27; Dunn, TT Vol. 22 in camera, pp.6:17-7:5). This was done to improve the cassette’s aesthetic appeal to customers and create a higher perceived value, in response to a remark made by one of the retailers to whom Munchkin sold its cassettes (Ibid). Structurally, the Third Generation cassette was identical to the Second Generation cassette (Johnson, TT Vol. 21, p. 44:2-11; Dunn, TT Vol. 22 in camera, p. 7:2-5; ASF, para 78).
[20] The Third Generation cassettes became available in Canada in August 2017 (ASF, para 81). They were sold under three labels: Arm & Hammer, a brand owned by Church & Wright and with whom the Defendants partnered for the commercialization of some of their diaper products, Nursery Fresh (the Defendants’ own label) and President’s Choice, a private label of the retailer Loblaws that is also sold at Shoppers’ Drug Mart (ASF, para 79). Regardless of the label under which they were sold, the Third Generation cassettes were all structurally identical (ASF, para 80). These cassettes were compatible with the Defendants’ PAIL and STEP diaper pails, as well as the Plaintiffs’ Diaper Genie Essentials, Elite, Complete, Mini, and Expressions diaper pails in Canada (ASF, para 82).
[21] Munchkin began developing its Fourth Generation cassette in February 2019. They were prompted by the present litigation to redesign their cassettes to dispel any beliefs that their products infringe patents (Johnson, TT Vol. 20, p. 81:10-21; Dunn, TT Vol. 22 in camera, pp. 7:2-8:10). Mr. Johnson again acted as lead designer, with Munchkin’s legal team participating to ensure that their goals were met (Johnson, TT Vol. 20, pp. 81:22-82:5). Mr. Johnson testified that the most significant change between the Third Generation and Fourth generation cassettes was eliminating the angled wall at the bottom of the cassette and replacing it with a larger, diagonal wall (Ibid, pp.83:20-84:3). This created more space for the diaper’s insertion through the cassette into the diaper pail (Ibid). Mr. Johnson explained that they also reduced the amount of slots in the bottom of the cassette from twelve to four and made them more pronounced by adding walls on the inside of the slots (Ibid, pp. 82:21-83:12; 84:4-86:1). This functioned to push back the film off the surface of the cassette, creating a void between the bottom of the cassette and the film (Ibid). This was intended to assist users in fitting the cassette more easily into the Munchkin diaper pails’ holders, which contains four raised ribs in the bottom of the cassette holder. The four ribs fit into the four slots at the bottom of the cassette, thus allowing for the cassette to stay in place while the closing mechanism of the Munchkin pails is activated. The same plastic film was used in this model as for all previous generations of cassettes, except they added length of film (Ibid, p. 84:11-20).
[22] The Fourth Generation cassettes became available in Canada in February 2020 and remain so currently (ASF, para 87). They were initially sold under the Arm & Hammer, Nursery Fresh, and President’s Choice labels, but are presently only sold under the former two brands (ASF, para 85). All Fourth Generation cassettes are structurally identical, regardless of the label under which they are sold (ASF, para 86). These cassettes are compatible with the Defendants’ PAIL and STEP diaper pails and the Plaintiffs’ Diaper Genie Essentials, Elite, Complete, Mini, and Expressions diaper pails (ASF, para 88).
(2) The Defendants’ Diaper Pails
[23] Munchkin launched two diaper pails in March 2016: the PAIL and the STEP diaper pails (ASF, para 90). These pails are essentially the same, save for the presence of a foot pedal on the STEP pail, whereas the PAIL has no such step pedal (ASF, paras 90-91). That difference is irrelevant as to this case: it does not make a difference as to the infringement and invalidity allegations. Munchkin was motivated to create these diaper pails to improve upon their previous, discontinued Arm & Hammer diaper pail, and to create a product that would be able to fit both their previous plastic film refills, the “snap, seal and toss” bags, and their cassettes into the same pail (Dunn, TT Vol. 2, pp. 11:25-12:28; Johnson, TT Vol. 20, p. 52:9-17; Carlvelho, TT Vol. 20, pp. 6:10-7:8). There was a desire to improve the aesthetic appeal and to use more robust materials to increase its perceived value (Ibid). These pails would also allow Munchkin to increase retail prices and create a larger margin of profit for retailers (Dunn, TT Vol. 22, p. 13:1-4; Carvelho, TT Vol. 20, p. 7:4-8). Mr. Johnson testified to having been intimately involved in the design, with the lead designer on the project reporting directly to him (Johnson, TT Vol. 20, p. 52:3-8).
[24] The notable design feature of the PAIL and STEP diaper pails is its closing mechanism, which is the same as that found in Munchkin’s original Arm & Hammer pail (Johnson, TT Vol. 20, p. 52:18-23). The closing mechanism on the PAIL and STEP diaper pails have a rotating gear system that is activated when the lid closes (Johnson, TT Vol. 20, pp. 37:8-39:14; Bailey,TT Vol. 17, pp. 158:4-161:20). The plastic film is caught between the ‘blades’ or ‘petals’ of the star-shaped orange opening to the diaper pail. With the film in place, a rotating gear mechanism located beneath the holder transfers movement to this star-shaped orange opening that itself has a corresponding gear. It is the star-shaped orange part’s rotation that twists up the bag to seal it shut.
[25] Munchkin’s PAIL and STEP diaper pails continue to be sold in Canada exclusively by third-party online retailers Amazon.ca, Walmart.ca and Well.ca (ASF, para 92). When these pails are sold, they come with a Fourth Generation Munchkin cassette that is inserted into the pail’s cassette holder (ASF, para 93).
(3) Infringement by Assembly: The Plaintiffs’ Products
[26] The Plaintiffs Edgewell and Playtex, as well as their predecessors-in-interest and affiliates (collectively, the “Playtex Group”) sold diaper pails under the Diaper Genie brand prior to Angelcare’s acquisition of this portion of their business. Some of the allegations of infringement at issue before the Court concern assemblies between the following Diaper Genie diaper pails and the Defendants’ cassettes.
[27] The Playtex Group began selling the Diaper Genie Essentials diaper pail with a flat cassette holder in 2011 (ASF, para 105). This was a rebranding of the Diaper Genie II (Morand, TT Vol. 2, pp. 140:7-141:2; Morand, TT Vol. 3, p. 200:4-7), which the Playtex Group began selling in 2006 (ASF, para 102). In February 2014, the Playtex group added a snap-on protrusion to the holder for the cassette located in the pail, altering the shape of its cassette holder and making it complementary to the “chamfer-bottomed cassette” (ASF, para 107).
[28] The Playtex Group began selling the Diaper Genie Elite with a snap-on protrusion in February 2014, making it complementary to a chamfer-bottomed cassette (ASF, para 108).
[29] In November 2015, the Playtex Group began selling the Diaper Genie Elite with, instead of an added snap-on protrusion, had a protrusion moulded directly into the cassette holder (ASF, para 109). This pail is also known as the Diaper Genie Complete (Ibid).
[30] The Playtex Group launched its Diaper Genie Mini diaper pail, a smaller version of the Diaper Genie diaper pail, containing a cassette holder with a moulded protrusion to fit a chamfer-bottomed cassette, in October 2013 (ASF, para 110).
[31] In October 2016, the Playtex Group began selling the Diaper Genie Expressions diaper pail, which has a moulded protrusion complementarily shaped to fit a chamfer-bottomed cassette (ASF, para 111).
II. The Patents
[32] The six patents at issue relate to cassettes as well as their assembly within diaper pails. Five of the six patents are from a single family of divisional patents, which I will term the “Angelcare Patents”: the 384 Patent, the 159 Patent, the 421 Patent, the 312 Patent and the 415 Patent. They bear the same title: “Cassette and Apparatus for Packing Disposable objects into the Elongated Tube of Flexible Material”. The other is the 128 Patent, which stands independent of the Angelcare family but nonetheless claims an invention relating to diaper pail cassettes and their use within diaper pails.
[33] Collectively, these patents make 128 Claims, 113 of which the Plaintiffs are asserting in this action and 117 of which the Defendants seek to have declared invalid (some claims not asserted by the Plaintiffs in this case have their validity challenged nonetheless by the Defendants).
A. The 128 Patent
[34] The 128 Patent is entitled “Cassette for Dispensing Flexible Tubing Therefrom” and the application was filed on May 2, 2008. It lists Stephen Mowers, John Rousso, and Michael Jackson as the inventors. The Patent claims a United States priority date of May 4, 2007 from application US11/800,324. It became open to public inspection on November 13, 2008 and was issued on January 8, 2013.
[35] Notably, the 128 Patent was initially owned by Playtex Products. The rights in this patent were subsequently acquired by Angelcare in the context of the October 18, 2019 acquisition. As it stands, the agent for Playtex Products has requested that the Canadian Intellectual Property Office record the transfer of the 128 Patent to Angelcare as of December 7, 2020 (ASF, para 8).
[36] The 128 Patent makes 23 claims, of which the Plaintiffs allege infringement of the following eight claims in this case: 11 to 13, 16, 18, 19, 22 and 23. The Defendants allege invalidity of these same claims. They also allege the invalidity of Claims 1, 2, 20 and 21 despite the fact that the Plaintiffs do not allege their infringement by Munchkin. Prior to the claims themselves, the Patent provides information on the background of the invention, identifying the problems the Patent aims to solve, as well as a summary of the invention itself. There is also a detailed description of the preferred embodiments, illustrated in 13 figures appearing subsequent to the claims.
[37] The Patent’s disclosure makes clear that this Patent relates to disposal waste products, including soiled diapers. The disclosure focuses on soiled diapers, identifying sanitary issues and odour problems as the problems many diaper disposal systems aim to solve. One such system, expressly mentioned in the background of the invention, is the Diaper Genie (128 Patent, p. 1:19). The 128 Patent explains that this and similar inventions suffer from a significant drawback for consumers: users may accidentally install the diaper cassette upside-down (128 Patent, p. 1:26-29). I will refer to this as the “improper orientation problem”. This causes a variety of problems, one of which is that the upside-down cassette is exposed to the soiled diaper being inserted into the pail, causing “potential sanitary problems” (128 Patent, p. 1:29). This is a reference to the possibility that the soiled diaper may leave traces of its contents on the cassette body when it is inadvertently exposed, as it is placed upside-down (Powell, TT Vol. 6, p.115:6-21; Morand, TT Vol. 2, pp. 161:23-162:117). The other problems associated with the cassette’s improper orientation are the overabundance of plastic tubing that will be dispensed, as well as the difficulty users will face in identifying how much plastic tubing is left coiled inside the cassette (128 Patent, p.1:29-32).
[38] The disclosure identifies a second problem, this one relating to its shipping, storage, and display in retail outlets. Since cassettes are normally stacked one on top of the other in these settings, either in boxes or on store shelves, their shape can make them susceptible to toppling over or more difficult to stack (128 Patent, pp.1:33-2:5). I will refer to this as the “stackability problem”.
[39] The 128 Patent, as expressed in the patent’s disclosure, thus aims to solve the following issues: the improper orientation problem and the stackability problem (128 Patent, p. 2:6-8).
[40] The disclosure addresses the solution to the improper orientation problem in its description of the assembly between the cassette and the receptacle in the diaper pail that receives it. It describes embodiments of the invention where “alignment features” in the receptacle are “matingly engageable” with features in the cassette’s bottom such that it minimizes the likelihood that the cassette will be improperly installed or otherwise assures that the cassette is positioned upright (128 Patent, pp. 4:17-19, 4a:1-12).
[41] The disclosure describes a solution to the stackability problem through the use of what are termed “first registration features” and “second registration features” (128 Patent, pp. 2:20, 2:21). The first registration features are features on the cover of the cassette, while the second registration features are those on the bottom of the cassette (Ibid, p. 2:20-26). The first and second cassette registration features are “matingly engageable” with one another in such a way that allows the cassettes to be stacked one on top of the other and resist shifting relative to each other (see, e.g., Ibid; 128 Patent, p. 4:12-16). These first and second registration features are described as being a series of recesses and protuberances which are “complementarily shaped” to engage one another (see, e.g., Ibid, pp. 2:27-30, 3:1-3; 4:30-33). The disclosure delves into a series of embodiments that describe different ways the first and second registration features may be shaped and fit together harmoniously, providing numerous options for facilitating the shift resistance and stackability of cassettes (128 Patent, pp. 2:27-4:16).
B. The Angelcare Patents
[42] The Angelcare Patents are a series of divisional patents that claim different facets of a cassette for dispensing flexible tubing and its assembly into a diaper pail system. The 384 Patent is the primary application, with the 159 Patent as the first divisional application. The 421 Patent, the 312 Patent and the 415 Patent are divisional applications of the 159 Patent.
[43] The filing date for the Angelcare Patents is October 3, 2008 and they all claim October 5, 2007 as the priority date from European application EP 07019571.4 (“EP 571”). All of the Angelcare Patents, save the 312 Patent, were laid open for public inspection on April 5, 2009.
[44] Angelcare Development Inc. is listed as the owner on all of the Angelcare Patents. Indeed, these patents were initially owned by Angelcare Development Inc. prior to the amalgamation on October 1, 2020 that saw Angelcare Development Inc. continued under Angelcare. As discussed above, Angelcare now holds all of Angelcare Development Inc.’s property, including the rights in the Angelcare Patents.
(1) History of the Angelcare Patents’ Invention
[45] All of the Angelcare patents list Michel Morand as the sole inventor. Mr. Morand testified at trial to the development of the products that eventually led to the patents-in-suit.
[46] Mr. Morand’s relationship with Angelcare started in the early 2000s when he met Claude Maufette, a peer in industrial design who had been working on a diaper pail for Maurice Pinsonnault, the founder of Angelcare (Morand, TT Vol. 2 pp. 37:1-38:10). Mr. Morand joined in on the project, agreeing to work for half of his usual professional fees in exchange for royalties on products sold (Ibid; 38:11- 47:5). Mr. Morand worked on diaper pail systems and similar systems for “kitty litter” disposal, as both relied on similar technology (Ibid, p. 39:2-23). Notably, both of these systems include cassettes: ring-shaped devices that contain and dispense plastic film (Ibid). This plastic film (otherwise referred to as ‘plastic tubing’ or simply ‘bags’ during various witnesses’ testimony) functions as a bag into which soiled diapers or kitty litter are disposed of and stored in their respective pail systems.
[47] Mr. Morand testified that, at the time when he was brainstorming ideas for these products, Playtex’s Diaper Genie Twistaway (“DG Twistaway”) was the main player on the market that inspired his work (Morand, TT Vol. 2, pp. 39:24-40:16). He explained that this system operated to twist up diapers in plastic film individually, akin to sausage links (Ibid, pp. 50:8-54:15). Mr. Morand discussed the Twistaway’s flaws, saying that the plastic film was also difficult to cut, making it challenging to remove a full bag of dirty diapers from the pail, and that it was generally not a user-friendly system (Ibid, p. 55:6-21). This method of wrapping diapers failed to prevent odours from escaping, as the plastic film material itself let the odour leak through (Ibid, p. 49:15-26).
[48] In designing his initial cassettes with Angelcare, the Litter Locker and the Safety 1st Neat!, Mr. Morand aimed to respond to these flaws, making a simplified design that would be easy for the consumer to use and that responded to the flaws of Playtex’s Diaper Genie system (Morand, TT, Vol. 2, pp. 58:18-62:13). He created a cassette with only two parts: the lower interior part and its cover (Ibid, p. 60:18-24). He also created a tear-off tab on the cassette’s cover that, when removed, gave access to the plastic film stored within the cassette (Ibid, p. 62:10-27).
[49] Mr. Morand noticed in developing the Litter Locker system that a regular plastic bag was insufficient to effectively contain odours (Morand, TT Vol. 2, pp. 67:13-68:1). Accordingly, he incorporated a layer of Ethylene vinyl alcohol (EVOH) into the plastic film, creating an odour barrier (Ibid, pp. 68:23-69:27). This film, Mr. Morand testified, is what allowed the new Angelcare system to be designed as it was, given that it did not need to wrap up the bags into individualized packets, requiring less plastic film for the Angelcare system than for the DG Twistaway (Ibid, pp. 69:28-70:8). This impacted the cassettes’ design, allowing them to be much smaller with less plastic tubing stored therein (Ibid, p. 70:11-24). These changes meant the cassettes took up less space on both shelves in storage, on retailers’ shelves, and during transport (Ibid, pp. 120:26-121:13). Additionally, he designed the cassette’s cover and bottom with features that would ensure their stackability, i.e., that they would not topple over when stacked one on top of the other (Ibid, pp. 90:18-91:26)
[50] Playtex and Angelcare began collaborating in 2005, subsequent to a trade show in Cologne, Germany, where Mr. Morand and Angelcare presented their Captiva diaper pail system, a redesign of the Safety 1st Neat! and Litterlocker cassette systems (Morand, TT Vol. 2, pp. 123:5-20; 130:6-133:19). This relationship led Playtex to replace its DG Twistaway with the Angelcare system, marketed as the Diaper Genie II and later rebranded as the Diaper Genie Essentials (Ibid, pp. 140:7-141:2). It was the improvements upon this system that became the invention claimed in the Angelcare Patents.
[51] One flaw Mr. Morand identified as prompting a new design in the Angelcare-Playtex diaper pails was the propensity for users to install the cassette upside down in the Diaper Genie II (Morand, TT Vol. 2, pp. 160:20-162:28). He stated that he observed this at his child’s day care and that this could cause two problems. First, with the cassette upside-down, the plastic film would not come up and over the cover as intended, but instead be dispensed directly downwards. This means that parts of the cassette might be directly exposed to the dirty diapers as they were inserted into the diaper pail, contaminating the cassette and creating hygienic concerns. Second, with the film dispensed directly downwards, it would be dispensed more easily and in greater quantities than if the cassette had been placed in its proper orientation, making this position more wasteful.
[52] Observing the cassette’s improper use prompted Mr. Morand to find a solution by redesigning the cassette and the diaper pail to maintain its positive aspects without redesigning the cassette moulds entirely (Morand, TT Vol. 2, pp. 163:1-166:20). Using a series of metal rings to test his design, Mr. Morand altered the shape of the cassette to create an angle at its bottom (Ibid, 194:3-13; 196:1-199:11) as opposed to the cassette in use which had a flat bottom. This became the “chamfer-bottomed cassette”. He also added a part to the closing mechanism of the diaper pail system such that the mechanism would require the space created by the chamfer-bottomed cassette to move between its open to closed positions (Ibid, pp. 224:17-26, 225:10-18). These two features together were designed to make it obvious to the consumer when the cassette was installed upside-down, making it effectively impossible to install incorrectly because if installed incorrectly, the closing mechanism would not allow the cassette to sit improperly, thus preventing the diaper pail’s lid to close (Ibid, pp. 219:7-24; 223:5-8).
[53] Mr. Morand demonstrated the flat-bottomed cassettes relative to chamfer-bottomed cassettes using the Plaintiffs’ products to illustrate the difference in how they could be installed in the older, and newer, generations of the diaper pails, respectively. With the flat-bottomed cassette, consumers could accidentally put the cassette in upside-down and it would fit well into the diaper pail, as it was then designed. The ease of fit with the flat-bottomed cassette meant there was no way to tell, from the consumer’s perspective, that something was wrong. Conversely, the redesigned diaper pails have a closing mechanism that raises right up into the space at the bottom of the cassette. Without a chamfer, it becomes impossible to fit in the cassette in the pail (the holder of the cassette situated in the pail) because that cassette prevents the lid from closing properly. The chamfer on the other hand creates the space needed to allow the cassette to sit comfortably in the holder without the interference caused by the closing mechanism. To demonstrate at trial, Mr. Morand placed the chamfer-bottomed cassette upside-down in the redesigned diaper pails, showing how the closing mechanism and the features of the cassette’s holder in the diaper pail cause the cassette to raise up above where it should be, preventing the pail’s lid from closing. This would signify to the consumer that it was incorrectly installed, but only in the newer generations of diaper pails that have requisite features, such as the closing mechanism and protrusions in the cassette’s holder, that require the additional space created by the chamfered-bottomed cassette (Morand, TT Vol. 3, pp. 194:15-197:11).
(2) Disclos