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Plaintiffs that Stand Together Win Together: Entitlement to Claim Under the Patentee

Following its decision that Munchkin Inc. had infringed the Plaintiffs’ patents for diaper pails and cassettes (see 2022 FC 507), the Federal Court determined that Angelcare Canada Inc., Edgewell Personal Care Canada, and Playtex Products LLC were either patentees or “persons claiming under the patentee” under subsections 55(2) and (2) of the Patent Act and each entitled to monetary remedies.

In its prior decision, the Court determined that six patents, one owned by Playtex, and five owned by Angelcare, were infringed. No party at the remedies hearing disputed that Angelcare and Playtex are patentees with respect to the patents they own. However, the Defendants contested which (if any) of the Plaintiffs could be considered persons claiming under the patentee with respect to each patent at different points during the period of infringement.

Angelcare acquired the Diaper Genie business on December 18, 2019. Prior to December 18, 2019, which the Court termed the pre-acquisition period, all three Plaintiffs, Angelcare, Playtex and Edgewell were working together to sell Diaper Genie products. From December 19, 2019 to December 18, 2020, which was termed the transition period, Playtex and Edgewell commercialized Diaper Genie products with Angelcare. And from December 19, 2020 onward, which was termed the acquisition period, Angelcare was the sole party commercializing Diaper Genie products.

The Court noted that a licensee can claim under the patentee, even if their license is not exclusive. Moreover, the Court found, the notion of “all persons claiming under the patentee” is broad enough to “cover[] much more than licenses, whether exclusive or not”, and allows individuals including implied licensees and users of patented inventions to seek remedies for damages resulting from patent infringement. The parties did not dispute the law on this point.

Since Armstrong, we know that a license, if any, does not need to be exclusive. Moreover, Hughes J finds, following Jay-Lor, that it does not even have to be in writing. Finally, Hughes J reminds the reader that the claim must be one in respect of the use in Canada. […]

During the post-acquisition period (December 19, 2020 and onwards), the Court held that only Angelcare could seek monetary remedies because no commercial relationship between Angelcare and Edgewell or Playtex existed as of December 18, 2020.

During the pre-acquisition period (prior to December 19, 2019) and the transition period (December 19, 2019-December 19, 2020), the Court held that Playtex and Edgewell had been operating continuously with Angelcare throughout the process of cassette production and sale. More specifically, “the business relationships between the Plaintiffs led to their joint effort towards a shared goal”, which included practicing the patents owned by two of them.

While the Court held a written record of a license is not required by law, it nonetheless accepted the Plaintiffs’ evidence of their unwritten licenses in the form of “Confirmatory Patent Licenses.” The Court also relied on the fact that the Plaintiffs “work[ed] in unison” during the litigation and were represented by the same counsel.

All of the Plaintiffs were therefore considered patentees or persons claiming under the patentee for each of the infringed patents during two of the three relevant periods.