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Federal Court of Appeal Weighs in on Limitations of Summary Judgment Procedure

September 16, 2022


Summary dispositive procedures in patent infringement actions (by way of a motion for summary judgment or a motion for summary trial) have increased in popularity in the Federal Court of Canada over the past few years.

The Federal Court of Appeal’s (“FCA”) recent decision in GEMAK Trust v Jempak Corporation, 2022 FCA 141 illuminates the shortcomings of motions for summary judgment in patent infringement actions and will likely result in a shift toward the use of motions for summary trial, in which viva voce evidence is received by the Court and appropriate findings can be made regarding the credibility of witnesses.

The FCA overturned the Federal Court’s (“FC”) decision to grant summary judgment on the basis that the FC erred by:

  • making negative credibility findings regarding an expert witness based purely on a transcript of her testimony;

  • including “knowledge that is only discoverable through a reasonably diligent search” within the ambit of “common general knowledge”; and

  • excluding an expert’s opinion on infringement because he was more skilled and exacting than a person of skill in the art (POSITA).

Based on these errors, the FCA found that there was a genuine issue for trial and therefore allowed GEMAK’s appeal and dismissed Jempak’s motion for summary judgment.

Andrew Brodkin and Jordan Scopa of the Goodmans IP Team took carriage of the action for GEMAK after Jempak’s motion for summary judgment and successfully represented GEMAK on the appeal.


GEMAK owns two patents relating to dishwashing and laundry detergent compositions. The two patents each claim a composition in which percarbonate is “encapsulated” by a “blend” that includes carboxylmethyl cellulose.

Jempak manufactures and sells dishwashing detergent pods.

GEMAK brought an action against Jempak in July of 2018 for infringement of its patents but Jempak successfully moved for summary judgment on the basis of non-infringement (2020 FC 644) and GEMAK’s action was dismissed.

GEMAK’s appeal was heard in May of 2022 and decided in August of 2022.

Shortcomings of Summary Judgment in Making Credibility Findings

The FC found that GEMAK’s expert “failed to provide fair, objective and non-partisan opinions, which ended up tainting her entire evidence” resulting in the FC giving “little or no weight to her testimony”. Consequently, the FC treated Jempak’s expert testimony as being largely uncontested.

The FCA found three issues with the FC’s treatment of GEMAK’s expert evidence.

First, the FC conflated the conduct of GEMAK’s prior counsel during cross-examination with the expert’s conduct. During her first of two attendances for cross examination, GEMAK’s counsel repeatedly objected to Jempak’s questions, supposedly impeding Jempak’s ability to conduct the cross examination. The FCA found that it was inappropriate to hold such conduct against the credibility of the expert.

Second, the FC used GEMAK’s prior counsel’s combative attitude on cross examination to paint GEMAK’s expert as an “advocate instead of neutral objective expert attempting to assist the court”.

Third, the FC failed to account for alternative interpretations of GEMAK’s expert’s testimony. The FCA noted that:

While the Federal Court found the evidence of [GEMAK’s expert] to be “wanting and problematic in many respects”, a review of the transcript of her cross-examination suggests other possible interpretations of her evidence. Rather than being “evasive and defiant”, the transcript could be read to suggest that [GEMAK’s expert] was a careful witness, one who wanted to be sure that she understood questions before answering them, and one who would not allow herself to be pushed around by counsel.

These three pitfalls in the FC’s decision support the notion that “issues of credibility ought not to be decided on motions for summary judgment” and that “[c]ases should … go to trial where there are serious issues with respect to the credibility of witnesses”.

The FCA further noted that, “while patent infringement issues are not by definition excluded from the ambit of the summary judgment process, they tend to raise complex issues of fact and law that are usually better left for trial …That said, this is not a hard and fast rule, and there will be cases where use of the summary judgment process is appropriate”. Since this area of the law generally involves significant conflicting expert testimony, a summary or full trial is often better suited to making the necessary credibility findings.

Common General Knowledge Does Not Include Information That Is Only Discoverable Through a Reasonably Diligent Search

The FC correctly stated that common general knowledge “is the knowledge generally known by the skilled person at the relevant time, and includes what the skilled person may reasonably be expected to know and be able to find out”.

However, the FC proceeded to include “knowledge that is discoverable through a reasonably diligent search” in such a definition, which the FCA clarified does not necessarily form part of the common general knowledge.

In the course of its analysis, the FCA also noted that, for purposes of the analysis of anticipation or obviousness, “it is no longer required that prior art be available to the POSITA through a reasonably diligent search for it to be potentially relevant”.

Infringement Need Not Be Determined from the Position of the POSITA

GEMAK produced another expert to contradict the expert evidence put forward by Jempak with respect to test results that suggested Jempak did not infringe GEMAK’s patents.

GEMAK’s expert in this instance was an analytical chemist who used chemistry techniques that were not necessarily available to the POSITA. The FC erred in relying on this fact to disregard GEMAK’s expert’s testimony respecting the testing because the question of whether the patents were infringed was a factual question. The FCA specifically noted that “[r]eviewing courts have, moreover, endorsed the use of analytical chemistry techniques that would not have been available to a POSITA at the relevant time or that would have been beyond the abilities of a POSITA” in the assessment of the factual question of infringement.

For all of these reasons, the FCA found that there was a genuine issue for trial and therefore dismissed Jempak’s motion for summary judgment and directed the action to proceed to trial.


Author: Tommy Friedlich


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