Federal Court Of Appeal Issues Decision In Diaper Pail Patent Saga

On September 27, 2024, the Federal Court of Appeal (the FCA) issued its decision in Munchkin, Inc. v Angelcare Canada Inc., 2024 FCA 156, addressing two appeals concerning the infringement of multiple patents relating to diaper pails and cassettes to be placed therein.

At the trial level, the Federal Court ruled that most of the patent claims in issue were valid and that Munchkin, Inc. and Munchkin Baby Canada, Ltd. (collectively, Munchkin) had infringed some of the patent claims in issue, finding both direct and indirect infringement.  The trial judge also determined that the American parent company, Munchkin, Inc., was liable for infringement, as previously reported by the E-TIPS Newsletter here. 

Munchkin appealed the validity and liability conclusions, and Angelcare Canada Inc., Edgewell Personal Care Canada ULC and Playtex Products, LLC (collectively, Angelcare) appealed some of the lower court’s conclusions on non-infringement with respect to a particular Munchkin product (i.e., Munchkin’s Generation 4 product).

On the validity issue, Munchkin argued that a disclosure by the named inventor to a prototype manufacturer constituted an anticipation of the patents in issue.  The FCA upheld the decision of the trial judge, affirming that there is a presumption of an obligation of confidence owed by a manufacturer to its client.

On the liability issues, Munchkin argued that the US parent company had no office or employees in Canada and had not committed any infringing activity in Canada, and therefore should not be held liable.  The FCA dismissed this argument, noting that “[t]he key is whether the infringing activities took place (they did in this case), and whether the person located outside Canada (here, Munchkin, Inc.) made itself liable therefor, either by having common cause with a Canadian actor (Munchkin Canada) or otherwise being a party to the infringement.”  The FCA noted that foreign entities cannot escape liability by making arrangements outside of Canada that result in patent infringement in Canada.

Lastly, regarding Angelcare’s appeal, the FCA agreed that the trial judge erred in his claim construction.  In the circumstances, the FCA decided that it was appropriate for it to decide the infringement issue rather than remitting the issues to the Federal Court, which would result in further delay and “be unnecessary and contrary to the interests of justice.”  The FCA set aside the trial judge’s decision with respect to Munchkin’s Generation 4 product, and substituted findings of infringement.

Thus, Munchkin’s appeal was dismissed, and Angelcare’s appeal was allowed.

Summary By: Michelle Noonan