Executive Summary: Key Legal and Evidentiary Issues

• Gemak Trust alleged that Jempak ULC's private-label dishwasher pods infringed claims 10 to 12 of Canadian patent 2,276,428, which cover an encapsulated percarbonate granule.
   
• Expert testing using Raman spectroscopy, UPLC-MS, and scanning electron microscopy formed the core evidentiary dispute over whether a sulfate, carboxymethyl cellulose, and nonionic surfactant blend encapsulated the percarbonate.
   
• Justice Pallotta found that Gemak had not proven, on a balance of probabilities, that the tested granules had a blend encapsulating the percarbonate as claim 10 requires.
   
• Admissibility disputes over reply and sur-reply expert evidence, and over a fact witness's testimony on stability, required rulings before the infringement analysis could proceed.
   
• Jempak's counterclaim succeeded on insufficiency, since the inventor withheld information about which tested formulations worked and which failed.
   
• Neither anticipation, obviousness, overbreadth, nor inutility were established, and the parties' pre-existing costs agreement meant no separate ruling on costs was required.
   

Facts of the case

Gemak Trust, established for the benefit of inventor Gerald Thomas Hinton's children and held by trustees Gerald Thomas Hinton and Elizabeth Jane Hinton, owns Canadian patent 2,276,428, titled "Detergent" (the 428 Patent). The patent relates to detergent formulations packaged in water-soluble polyvinyl alcohol (PVA) film, such as laundry or dishwasher pods. Gemak sued Jempak ULC's predecessors in 2018, after the patent had already expired on January 12, 2018, seeking declaratory relief and a monetary award for alleged infringement dating back to July 3, 2012. Jempak's predecessor initially won summary judgment in 2020 on the basis that there was no genuine issue for trial, but the Federal Court of Appeal set that judgment aside in 2022, finding the motions judge had made improper credibility findings affecting claim construction, and ordered the matter to trial. Gemak asserted claims 10 through 12 of the 428 Patent, which claim an encapsulated percarbonate granule comprising a percarbonate core and a blend — made up of a sulfate, carboxymethyl cellulose (CMC), and a nonionic surfactant — that encapsulates it. Gemak alleged that Jempak's dishwasher pods, sold under various private-label brands in standard, premium, and environmental product lines, contained sodium percarbonate granules with all three blend ingredients on their surface, infringing the patent. Jempak denied infringement and counterclaimed that claims 10 to 12 were always invalid for anticipation, obviousness, insufficiency, overbreadth, and inutility, and also raised a Gillette defence.

Policy and legislative provisions at issue

The dispute centred on claim 10 of the 428 Patent, which claims "an encapsulated percarbonate granule for use in detergent products storeable [sic] in PVA film packaging, the granule comprising a percarbonate and a blend encapsulating the percarbonate, wherein the blend comprises a sulphate, carboxymethyl cellulose and a nonionic surfactant." Dependent claim 11 narrows the percarbonate to sodium percarbonate, and dependent claim 12 narrows the sulfate to sodium sulfate. Gemak's infringement claim relied on section 42 of the Patent Act, which grants a patentee the exclusive right to make, use, and sell the invention, while its claim for damages relating to the six years preceding the action invoked section 55.01 of the Patent Act. Jempak's insufficiency argument was grounded in the disclosure obligation described in Teva Canada Ltd v Pfizer Canada Inc and Consolboard Inc v MacMillan Bloedel (Sask) Ltd, under which a patentee must disclose enough for the public to make the same successful use of the invention as the inventor once the monopoly expires, and in Seedlings Life Science Ventures, LLC v Pfizer Canada ULC, which requires that a disclosure teach all embodiments of the invention without undue experimentation.

Reasoning and analysis

The parties' experts were largely aligned on claim construction, so the court's analysis turned on infringement and validity rather than disputed claim terms. On infringement, Gemak's expert, Dr. Nuckolls, tested percarbonate beads removed from eight representative Jempak products using Raman spectroscopy, UPLC-MS, and scanning electron microscopy, and concluded that sodium sulfate, CMC, and nonionic surfactant were present on the surface of every tested granule. Jempak's experts, including Dr. Babcock and Dr. Mort, challenged the reliability of that testing, pointing to the absence of a process control, the loss of spatial information once a removed granule is treated with methanol, and the lack of comparative imaging to confirm that a blend had ever occupied the granule surface. Justice Pallotta accepted Jempak's criticisms, finding it likely that some tested beads had been contaminated and that Dr. Nuckolls' results did not reliably establish that the three blend components were present, let alone that they existed together in a blend encapsulating the percarbonate. The court also addressed a separate stability dispute: Jempak argued that Gemak had not shown the granules were functionally stable or storable in PVA film, but the court had earlier partially struck evidence from Jempak's fact witness, Nihat Elbi, under the "Elbi Order," ruling that Jempak could not raise a new, prejudicially late non-infringement theory about perforated packaging. On validity, the court rejected Jempak's anticipation and obviousness allegations because none of Jempak's experts opined that the cited prior art — including the Soludoz Product, the Le Nigen patent, and the Solvay and Rommel references — disclosed or rendered obvious the claimed encapsulating blend. However, the court accepted Jempak's insufficiency argument: inventor Gerald Hinton had tested multiple formulations using the four claimed ingredients, some of which worked and some of which did not, but the patent specification did not disclose which formulations were successful, leaving the skilled person to rediscover through experimentation what Hinton already knew. Applying Seedlings, the court found this failure to disclose working formulations breached the patent bargain. Jempak's overbreadth and inutility arguments failed because Jempak did not address the "storable in PVA film packaging" claim limitation or otherwise show the claims exceeded what Hinton invented or lacked practical utility.

Ruling and overall outcome

Justice Pallotta dismissed Gemak's infringement action, finding that Gemak had not established the asserted products contained granules with all the essential elements of claims 10 through 12. Jempak's counterclaim was allowed in part: claims 10 to 12 of the 428 Patent are and have always been invalid for insufficiency, though Jempak did not succeed on its anticipation, obviousness, overbreadth, or inutility arguments. Because Gemak's infringement claim failed at the threshold, the court did not need to address the remedies issues Gemak had raised, including its request for an accounting of profits, damages, or springboard relief for post-expiry conduct. The parties had already reached their own agreement on the all-in costs of the trial, so no separate costs ruling was made. Jempak was the overall successful party, having defeated the infringement claim entirely and secured a declaration invalidating the asserted claims, while no monetary award was made to either side in this decision.