Date: 19980423
Docket: T-2565-96
BETWEEN:
DUPONT CANADA INC.,
Plaintiff,
- and -
GLOPAK INC.,
Defendant.
REASONS FOR ORDER
MULDOON, J.
[1] The defendant moves for summary judgment, a declaration, in respect of its allegation that it does not infringe Canadian Patent No. 1,205,052 (the "patent"). The patent is entitled "pouches of ethylene C6-C10 alpha-olefin copolymer film" and is owned by the respondent, DuPont Canada Inc. ("DuPont"). The patent is also known as the Storms' patent, named after the inventor, William J. Storms. The patent relates to a pouch which is inevitably filled with flowable materials such as milk, and in particular, to the polymer film from which the pouch is made.
[2] DuPont and the applicant, Glopak Inc. ("Glopak") are competitors in selling film to make pouches for milk and the machinery used to fill and seal the pouches. Indeed, by all appearances, they are locked in a territorial war in that particular market. Originally, Glopak manufactured several types of pouch film to supply to dairy customers. However, Glopak discontinued its earlier films and is now manufacturing and selling only one composite film identified by the code number GI-911.
[3] On June 26, 1996, DuPont initiated an infringement action against Glopak in respect of the films manufactured and sold by Glopak, including the Glopak film. One month later, on July 24, 1996 DuPont discontinued that action without prejudice. For a short time, the parties seemed to be moving toward peaceful, collaborative relations. However, on November 21, 1996, DuPont initiated a second infringement action against Glopak. As part of the relief sought in the main action, DuPont seeks an injunction restraining Glopak from:
| (i) infringing upon the invention as claimed in Canadian Letters Patent No. 1,205,502; |
| (ii) infringing upon any of claims 3, 4, 13, 16, 17 and 27 of said patent; |
| (iii) making, using, selling or including others to make, use or sell pouches containing milk or other liquid or flowable material made from GLOPAK film. |
[4] In March 1997, months after the second action was initiated, Glopak began manufacturing the GI-911 film and it is in relation to this film that Glopak seeks a summary declaration that the film does not infringe the patent held by DuPont. Glopak's urgency in having this matter determined by way of summary procedure is due to the fact that the corporation wishes to reassure its clients that its current film does not infringe DuPont's patent, particularly since this is the only film currently being manufactured by Glopak. Only the GI-911 film is in question. Glopak is content to have the other films which it discontinued to be dealt with subsequently on the merits, presumably at trial.
[5] It is important to note that, unlike the other films at issue in the main action, there is no dispute as to the composition and weight of the GI-911.
[6] The Storms' patent is made from a material comprising a linear copolymer of ethylene and a C6-C10 alpha-olefin having certain density and melt index. At issue are claims 3, 4, 13, 16, 17, and 27 of Storms' patent. The elements at issue as reflected in claim 1 are in bold lettering:
| A pouch containing a flowable material, said pouch being made from a sealant film in tubular form and having traversely heat-sealed ends, said sealant film being made from a material comprising 50 to 100 parts of a linear copolymer of ethylene and a C6-C10 alpha-olefin having a density from 0.916 to 0.930 g/cm3 and a melt index of 0.3 to 2.0 dg/min, and from 0 to 50 parts by weight of at least one polymer selected from the group consisting of (a) a linear copolymer, of ethylene and a C4-C10 alpha-olefin having a density of from 0.916 to 0.930 g/cm3 and a melt index from 0.3 to 2.0 dg/min, (b) a high-pressure polyethylene having a density of from 0.916 to 0.924 g/cm3 and a melt index from about 1 to 10 dg/min. and (c) mixtures of (a) and (b), said sealant film being selected on the basis of providing pouches with an M-test value substantially better at the same film thickness, than that of pouches made with film of a blend of 85 parts of a linear ethylene-butene-1 copolymer having a density of about 0.919 g/cm3 and a melt index of 0.75 dg/min. and 15 parts of a high-pressure polyethylene having a density of about 0.918 g/cm3 and a melt index of 8.5 dg/min. |
[7] The above recited text is so incomprehensible that, when read aloud, it verges on gibberish to this judge who, by education is utterly ignorant and innocent of the chemistry invoked. That has defeated the defendant's sense of urgency in that this judge has had no tutor, nor yet any viva voce evidence, to aid him to unlock the mysteries inherent in the above recited claim 1 of the patent in suit. Summary judgment, indeed! A knowledgeable, living teacher with whom the judge could engage in socratic or other dialogue, would have greatly helped to make this proceeding more summary. This judge is far from being skilled in this art. Of course, once one finally understands, as now presumably, it all seems more simple than first apprehended. That is the raison d'être of teaching.
[8] So, on the basis of the claims in the patent, DuPont claims that the Glopak film infringes the patent as it is a "sealant"; its density is within the range of the patent; it is made from a high-pressure polyethylene with a melt index from 1 to 10 dg/min and finally, that the pouch has an M-test value substantially better at the same film thickness1.
[9] The Glopak film is comprised of three layers (being the inner core, and outer layers) and has a certain density, not within the range specified in the patent, being 0.916 to 0.930 g/cm3 film. Pursuant to a confidentiality order perhaps ill-advisedly granted by Prothonotary Morneau, the composition of the GI-911 film cannot be revealed. However, this Court notes, and it was not disputed by the parties, that the density of the GI-911 film is not within the range specified by the patent.
[10] One of the main points of contention about the other films is whether the Glopak film is properly characterized as a "composite" film or as a "sealant" film. DuPont argues that the film is a sealant, and thus the density of all three layers together must be considered to determine whether the film infringes the patent. Glopak, however, argues that the film is properly characterized as a composite film, which means that only the total density of the outer and inner layers should be compared with the patent to determine whether there is an infringement.
[11] For the purposes of this summary judgment motion only, Glopak agreed to limit the issues before this Court. In essence, Glopak agreed to have this Court consider the whole density of the film (the inner core, and outer layers) in determining whether there is an infringement. Glopak also agreed to have the Court ignore the difference in the characteristics of the of the high pressure polyethylene it uses and it conceded that its film would meet the M-test values referred to in the patent. By allowing the Court to ignore these issues, in effect Glopak is conceding that it meets three of the four contested elements of the patent. Thus, the only issue before this Court is whether the Glopak film, having a density different from that of the range specified in the patent, constitutes an infringement. In other words, Glopak is arguing that even if the Court accepts that three of the four elements of the patent are met, there is still no infringement as the density of the film (the fourth element) differs from that of the patent.
[12] Before setting out the arguments of the parties in relation to whether this is an appropriate case for summary judgment, it is necessary to set out the issues, as each of the parties defined them.
[13] DuPont argues that there are eight issues to be determined before this Court. The issues are as follows:
1. Is the film a "composite" or a "sealant" film? That is, are all three layers to be taken as a whole or are only the inner and outer layers to be compared with the patent?
2. Is it necessary for there to be an ambiguous term in the patent before infringement of the "pith and substance" is to be determined?
3. Can the film produced by DuPont according to the patent be used to find the functional equivalence of the Glopak film and the patent?
4. Is the GI-911 film with a certain secret, protected density an infringement of the "pith and substance" of the patent whose range is between 0.916 to 0.930 g/cm3?
5. To determine infringement of the patent, is it necessary to consider the high pressure polyethylene component of the Glopak film?
6. If the high pressure component of the Glopak film is relevant, is the melt index of that film within the "pith and substance" of the patent?
7. Does the Glopak film meet the M-test of the patent?
8. Did Glopak induce and procure its customers to infringe DuPont"s patent?
[14] Since Glopak has agreed to limit the issues for the purposes of this motion, most of the issues raised by DuPont do not need to be addressed. Accordingly, the only relevant issue is issue 4, whether the Glopak film, having a density outside the scope of the patent, infringes the patent. Glopak risks the outcome of this summary declaration proceeding on the disposition of the density issue.
[15] Despite the fact that most of the issues have been eliminated for the purposes of this motion, DuPont argues that it is not appropriate to determine this final question by means of summary judgment. The relevant rule on summary judgment motions provides that:
| 432.3 (1) Where a judge is satisfied that there is no genuine issue for trial with respect to a claim or defence, the judge shall grant summary judgment accordingly. |
| .... |
| (4) Where a judge decides that there is a genuine issue with respect to a claim or defence, the judge may nevertheless grant summary judgment in favour of any party, either upon an issue or generally, unless |
| (a) the judge is unable on the whole of the evidence to find the facts necessary to decide the questions of fact or law; or |
| (b) the judge considers that it would be unjust to decide the issues on the motion for summary judgment. |
[16] During much of the time since the hearing, a decision according to rule 432.3(4)(a) has seemed to be right. DuPont cites several authorities in support of its argument that summary judgment should not issue: The Queen v. Gary Bowl Ltd., [1974] 2 F.C. 146 (F.C.T.D.), Allied Colloids Ltd. v. Alkaril Chemicals Ltd. (1990), 34 C.P.R. (3d) 426 (F.C.T.D.), American Cyanamid Co. v. Canada (Minister of Health and Welfare) (1994), 55 C.P.R. (3d) 461 (F.C.T.D.), Innotech Pty. Ltd v. Phoenic Rotary Spike Harrows Ltd. et al (1996), 68 C.P.R. (3d) 457 (F.C.T.D.) and Pallman Maschinenfabrik G.m.b.H. Co. KG v. CAE Machinery Ltd. (1995), 62 C.P.R. (3d) 26 (F.C.T.D.). In all of these cases the Court was of the view that where the facts are not clear, straightforward or if they are in dispute, summary judgment should not be granted. While these cases do, indeed stand for the propositions put forward by DuPont, in this case, the facts as they have been limited by Glopak lead to the conclusion that there are no facts at issue, merely whether there is infringement of the patent.
[17] During oral argument, DuPont argued that in order to determine whether there is infringement of Storms' patent, the Court must look at the effect of varying the density from that claimed in Storms' patent to that in the GI-911 film.
[18] DuPont relies on Mobil Oil Corp. v. Hercules Canada Inc. (1995), 63 C.P.R. (3d) 473 (F.C./A.) in which Mr. Justice Marceau made the following comments at page 488:
| The distinction made by the trial judge, of course, due to the fact that, in looking into the issue of infringement, he adopted the traditional twofold test according to which one should first inquire into whether the defendant"s activities fall clearly within the words of the claim and, if not, then whether what the defendant has done has taken the substance of the invention defined by the claims (see the comments of Professor Fox in his Treatise Canadian Patent Law and Practice (1969) at p. 324). I share the doubts expressed by Pratte J. in Eli Lilly & Co. v. O"Hara Manufacturing Ltd. (1989), 26 C.P.R. (3d) 1, with respect to such an approach. |
| The established law in Canada, as stated long ago by Thorson P. in McPhar Engineering Co. v. Sharpe Instruments Ltd. (1960), 35 C.P.R. 105 (Ex. Ct.), is "that if a person takes the substance of an invention he is guilty of infringement and it does not matter whether he omits a feature that is not essential to it or substitutes an equivalent for it". That being the case, I do not appreciate the utility of the traditional twofold test and even its relevance. No doubt a textual infringement will simplify the problem as it will put an immediate end to the inquiry. But it seems to me that the exercise may be useless in cases like this one where the distinction between textual and substantial infringement may be difficult to draw... It is my opinion that one should not endeavour to create a distinction between a substantial and a literal infringement in a case such as this; one should construe the claims so as to determine what exactly lies within the scope of the inventor's rights. Once this has been determined, then one can consider the defendant's product to decide if it falls within the scope of the claim. |
[19] Accordingly, the first step is to construe the patent at issue. To do this, it is necessary to determine whether the density specified in the patent, being 0.916 to 0.930 g/cm3 is an essential element of DuPont"s patent.
[20] To determine whether the density of the film is an "essential element" to the patent, in the words of Lord Diplock in Catnic Components Ltd. v. Hill and Smith Ltd., [1982] R.P.C. 183 at pages 242 to 243:
| My Lords, a patent specification is a unilateral statement by the patentee, in words of his own choosing, addressed to those likely to have a practical interest in the subject matter of his invention (i.e. "skilled in the art") by which he informs them what he claims to be the essential features of the new product or process for which the letters patent grant him a monopoly. It is those novel features only that he claims to be essential that constitute the so-called "pith and marrow" of the claim. ... The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way in the invention worked. |
[21] That said, however, the ultimate task of construing the patent rests on the Court alone. In Martinray Industries Ltd. v. Fabricants National Dagendor Manufacturing Ltd. (1991), 41 C.P.R. (3d) 1, Mr. Justice Denault noted at page 18 that a presumption arises when dealing with components of a claim:
| In short, each component of a claim will be regarded as essential unless it is clear to one skilled in the art that the inventor knew that the failure to comply with this specific component would have no effect on the way the invention worked. |
[22] The parties have each filed affidavits by persons "skilled in the art". Glopak states that the density of the ethylene and octene-1 copolymer is an essential element of the patent. As evidence that it is an essential element, Glopak asserts that the statements of Mr. Alan Breck of DuPont, one skilled in the art, demonstrate this conclusion. In his affidavit, Mr. Alan Breck deposes, at page 130 of the joint application record that:
| 5. The patent generally relates to pouches which can be used to contain flowable material such as milk. Pouches are made on form-and-fill machines from one of two components: |
| a) a linear copolymer of ethylene and a C6-C10 alpha-olefin having a certain density and melt index; and |
| b) an optional component which can be: |
| i. a linear copolymer of ethylene and a C4-C10 alpha- olefin; |
| ii. a high pressure polyethylene; or |
| iii. a mixture of (a) and (b) |
| [Underlining not in original] |
He later swears (same page) that:
| 6. In the case of the linear copolymer of ethylene and a C6-C10 alpha-olefin, Claim one requires it to have a density of from 0.916 to 0.930 g/cm3 and a melt index of from 0.3 to 2.0 dg/min. |
| [Underlining not in original] |
Similarly, at page 134:
| 17. Based on GLOPAK"S admissions in its Statement of Defence and Counterclaim, the affidavit of Mr. Edwards and information provided by the Solicitors for GLOPAK, in my opinion, the GLOPAK film, has each and every one of the chemical and weight percentage characteristics listed in Claim one of the Storms patent but for the density of the ethylene and octene-1 copolymer and the melt index of the high pressure polyethylene. |
| [Underlining not in original] |
[23] During his cross-examination, Mr. Breck confirmed that the density of the ethylene and octene-1 copolymer was an essential element of the patent, (pages 265 to 266, joint application record):
| Q. 99. But I"m taking you to the context of the paragraph 5a: "a linear copolymer of ethylene and C6 -C10 ...having a certain density and melt index," and I am leaving aside the optional. It is optional, I can leave the high pressure polyethylene aside. |
| So I"m asking you, in the context of this product, the linear copolymer of ethylene and octene-1, is the density not an essential element of that product? |
| A. Yes it will be. |
| ... |
| Q. 104. And it is essential that it be in the range, as you say of 916 to 930. |
| A. No question about that, yes. |
[24] During his re-examination, by counsel for DuPont, Mr. Breck added the following comments (pages 323-24, 326):
| Mr. Cameron: |
| Q. 391. All right. And look at the middle of page 27. It states: "But I"m taking you to the context of the paragraph 5a: "a linear copolymer of ethylene and C6 -C10 ...having a certain density and melt index," and I am leaving aside the optional, " what did you understand he was referring to as "the optional" |
| A. The optional component. |
| Q. All right. |
| A. Which would be b. |
| Q.393 He continues, "If it is optional, I can leave the high pressure polyethylene aside." |
| "So I"m asking you, in the context of this product, the linear copolymer of ethylene and octene-1, is the density not an essential element of that product?" Your answer, "Yes, it will be." Could you explain what you meant by that answer?... |
| Q. 394 Does that mean yes, it will not be an essential element, or yes, it will be an essential element? |
| A. Well, I"m thinking in the context of a film which can be used on these Prepak type machines to make milk pouches that are functional. And when you start to talk about the different components, it"s a bit cloudy; but if you zero in on just being able to use component A to make your film, then it"s pretty clear to me that it has to have the density in the range specified by the Storms patent to be functional. |
| ... |
| Q. 399 The question is, in view of paragraph 16d of your affidavit, could you explain your answer on page 28? What did you mean when you is said it is essential that the density of the octene-1 be in the range of 916 to 930? |
| A. At this point we were talking about making the pouch film out of only ethylene octene copolymer. And if that"s the case, then I believe it will definitely have to be in that density range. If you"re talking about blending and so on, such that you can compensate for certain things with other things, and still end up with these essential properties, then I"m less convinced that it has to be exactly in that range. |
[25] From this latter statement, it is apparent that DuPont"s position is that Storms' patent can be construed to cover a density lower than 0.916 g/cm3 . In support of this statement, Mr. Breck swore to the following statements at page 138 of the joint application record:
| 34. The Storms patent taught the use of making a film for pouches out of linear low density copolymers of ethylene and octene-1 as opposed to linear medium or linear high density copolymers. These were the three sub-groups of linear ethylene copolymers commercially available in North America in the early 1980's. |
| 35. I understand that the Storms patent originated with a patent application that was filed in 1982 and issued in 1986. At that time, at least in North America, the lower limit of the density of low density high pressure polyethylenes was in the order of 0.916 g/cm3. In the mid-1980's, very low density polyethylenes were introduced to North America which were linear copolymers of ethylene and other higher olefins having densities in the range of 0.900 to 0.915 g/cm3. Marked as Exhibit A to this affidavit is an article from CEH Marketing Research Report on Linear Low-Density Polyethylene (LLDPE) Resins, 1996, Chemical Economics Handbook - SRI International reciting the history of these resins. |
| 36. In my opinion anyone reading the Storms patent when it was issued in 1986 would have understood that the density reference in the claims for the copolymer of between 0.916 to 0.930 g/cm3 would not exclude the newly available lower density copolymers. I could find nothing in the Storms patent that would exclude the use of such resins. |
[26] DuPont adds that the change in density does not affect on the way the invention works. To support this claim, DuPont conducted experiments to demonstrate that the effect of varying the component of the film from a density to 0.916 to the density in Glopak"s film. These experiments demonstrate that the GI-911 film exhibits very similar physical characteristics to the DuPont SM3 film, a film which is representative of Storms' patent. In his affidavit, Mr. Breck concludes that the Glopak GI-911 film is functionally equivalent to that of the DuPont SM3 film. This conclusion is based on the fact that, in his opinion, few or no adjustments are required when substituting the Glopak film for the DuPont film. In addition, the film is run on the form-and-fill machines at the same speed. Further, Mr. Breck"s experiments found that impact resistance, haze and luminous transmittance, specular gloss and NMR tests to show similar results on both films.
[27] These observations require comment. To begin, DuPont is seeking to have the Glopak film compared to a film produced by it in order to determine whether there is infringement of Storms' patent. On this issue, several judges of this Court have already held that this is not the appropriate means of determining whether there is infringement. In the words of Mr. Justice Dubé in Airseal Controls Inc. v. M & I Heat Transfer Products (1993), 53 C.P.R. 259 at page 2702:
| It is also well established that an infringement is not assessed by comparing the product of the invention to the product of the infringer, but by comparing the infringer"s product to the patent of invention, and, in particular to its claims. |
[28] Accordingly, the test is not whether the density change affects on the operation of the DuPont film, but whether the change affects the operation of Storms' patent. For the moment, even if this Court accept DuPont"s claims that it has no effect on the operation of Storms' patent, that does not equate to a finding that the density is not an essential element of the patent. As stated by Lord Diplock in Catnic at page 243:
| Where it is not obvious, in light of then-existing knowledge, the reader is entitled to assume that the patentee thought at the time of the specification that he had good reason for limiting his monopoly so strictly and had intended to do so, even though subsequent work by him or others in the field of the invention might show the limitation to have been unnecessary. It is to be answered in the negative only when it would be apparent to any reader skilled in the art that a particular descriptive word or phrase used in a claim cannot have been intended by a patentee, who was also skilled in the art, to exclude minor variants which, to the knowledge of both him and the readers to whom the patent was addressed, could have no material effect upon the way in which the invention worked. |
[29] Applying these principles to this case, the question to be answered is: would the specification make it obvious to a reader skilled in the art that the description of the patented pouch "being made from a material comprising 50 to 100 parts of a linear copolymer of ethylene and a C6-C10 alpha-olefin having a density from 0.916 to 0.930 g/cm3" could not have been intended to exclude lower density copolymers such that the claim would apply to any linear copolymer of ethylene and a C6-C10 alpha-olefin having a density below 0.930 g/cm3?
[30] In Eli Lilly & Co. v. O"Hara Manufacturing Ltd. (1989), 26 C.P.R. (3d) 1 (F.C./A.), at page 5 Mr. Justice Pratte noted that the answer to the question:
| ...depends on the interpretation that is put on the claims. That answer, therefore, must be consistent with the text of the claims. A court must interpret the claims; it cannot redraft them. When an inventor has clearly stated in the claims that he considered a requirement as essential to his invention, a court cannot decide otherwise for the sole reason that he was mistaken. I also wish to add that, as the court, in interpreting the claims, is merely trying to find out what was the intention of the inventor, it cannot conclude that strict compliance with a word or phrase used in a claim is not an essential requirement of the invention unless it be obvious that the inventor knew that a failure to comply with the requirement would have no material effect upon the way the invention worked. |
[31] On this issue, the expert for Glopak, Mr. John Edwards believes that the inventor intended to limit his invention to certain films, i.e. those comprising a linear copolymer of ethylene and a C6-C10 alpha-olefin having a density between 0.916 and 0.930 g/cm3. His conclusion is based on the fact that the lowest density resins which Mr. Storms tested was a resin with a density of 0.918 g/cm3. Accordingly, the fact that the inventor lowered the density of the resin in the patent by 0.002 g/cm3 demonstrates that the inventor intended to limit the lowest range of densities covered by his invention.
[32] Mr. Breck does not provide any evidence to support his claim in paragraph 36 of his affidavit, that anyone reading the Storms' patent when it was issued in 1986 would have understood that the density reference in the claims for the copolymer of between 0.916 to 0.930 g/cm3 would not exclude the newly available lower density copolymers. There is, however, evidence to demonstrate the contrary.
[33] During his cross-examination (joint record, pages 283-84) Mr. Breck was asked the following question:
| Q. 202 ...He [Mr. Storms] filed some further development work for the hexene, and he was aware already for quite some time that low -- very low density were in Japan, and then afterwards were introduced in North America, and he didn"t see fit to introduce it in this -- in his patent. |
| A. No. |
| Q. 203 Isn"t that indicating to you that he did not mean to include that in his development, in his range of densities? |
| ... |
| A. ...That does not mean you would have the resin, you would be able to test it, you would be able to decide whether it"s applicable here and so on. That"s a long chain of events that has to take place. |
[34] If according to Mr. Breck, the inventor would have had to conduct further tests in order to determine whether his result would apply to ultra low density resins, it can only mean that it was not obvious to Mr. Storms that a variant would have no material effect on the way the invention works. DuPont provided absolutely no evidence to establish that it would be obvious to a person skilled in the art in May 1986 that the use of the ultra low density resins would have no material effect on how the invention works. There is also no evidence that, at the time, anybody in the industry had carried out tests which would have supported Mr. Breck"s conclusion that the use of these resins would have no material effect on the way the invention works. Breck would have inflicted a gap in the metaphysical fence within which Storms staked his claim. He would have had Storms diluting his densities down from the crisp values above stated to "maybe something below 0.916 g/cm3 to maybe something above 0.930 g/cm3". A patentee cannot get away with this, and Storms did not try. From this perspective Mr. Breck's paragraph 36 is absurd.
[35] Accordingly, the question framed above, would the specification make it obvious to a reader skilled in the art that the description of the patented pouch comprising "being made from a material comprising 50 to 100 parts of a linear copolymer of ethylene and a C6-C10 alpha-olefin having a density from 0.916 to 0.930 g/cm3" could not have been intended to exclude lower density copolymers such that the claim would apply to any linear copolymer of ethylene and a C6-C10 alpha-olefin having a density below 0.916 g/cm3 must be answered in the negative since:
| It is to be answered in the negative only when it would be apparent to any reader skilled in the art that a particular descriptive word or phrase used in a claim cannot have been intended by a patentee, who was also skilled in the art, to exclude minor variants which, to the knowledge of both him and the readers to whom the patent was addressed, could have no material effect upon the way in which the invention worked. |
| [Emphasis not in original] |
| (Catnic, p. 243, Lord Diplock, supra) |
[36] Even if this Court accepts Mr. Breck"s assertion that the change in density has no material effect at the present moment upon the way the invention works, that test is not the correct one to follow, according to Catnic. Rather, the test is whether it would be apparent to any skilled reader at the time the patent was issued that the change would have no material effect on the way the invention works. Since no experiments were conducted and there is no evidence to demonstrate that this knowledge existed at the time the patent was issued, this Court cannot conclude it was apparent that the density would have no material effect on the way the invention works.
[37] Accordingly, the density specified in the patent as being between 0.916 to 0.930 g/cm3 is an essential element of the patent. Thus, the patent in regard to the density of the first element simply covers densities within the range of 0.916 to 0.930 g/cm3. Since the GI-911 film does not come within this range, the film does not infringe the patent since Glopak has not taken the substance of the invention.
[38] After all the foregoing analysis, it is here these reasons will take a surprising turn. Dupont's statement of claim was filed on November 21, 1996. Glopak's statement of defence and counterclaim were filed on May 2, 1997. The Court notes the allegations formulated in paragraph 24 of that Glopak document:
| 24. The Defendant has sold *** in a list of samples identified by DuPont *** products identified by the code number [sic] GI-8 and GI-9 which products have now been discontinued and the Defendant is now manufacturing and selling only one composite film identified by the code number GI-911. |
[39] The Court was told that the manufacture of GI-911 started in March, 1997 months after the second statement of claim was filed in November, 1996. This is confirmed in paragraph 24 of Glopak's pleadings filed in May 1997. So, unless the plaintiff and its solicitors were clairvoyant, (which the Court does not accept) the claim by DuPont, does not contemplate GI-911, and cannot therefore allege that it infringes the Storms' patent. The statement of claim, of course, refers only to "Glopak's film". The motion for summary judgment nevertheless should be dismissed since GI-911 was never in issue in the action. Applications for summary judgment in these circumstances leave much to be desired, such as viva voce interrogation.
[40] Perhaps DuPont would like to sweep GI-911 into its action, but clearly it cannot now do so without a specific amendment of its claim. Perhaps counsel agreed, without telling the judge that the indicated time discrepancy would be ignored. On the basis of what is known to the Court, the motion for summary judgment dismissing the action in regard to GI-911 must be dismissed, for there is no action in regard to GI-911. There will also be no costs of the motion awarded to either side.
OTTAWA, ONTARIO
April 23, 1998
Judge
__________________1 The M-test is a test used to measure the strength of pouches. To perform the M-test, the pouches are filled with water and then dropped onto a concrete floor from a height of 5 feet. The number of pouches which break or leak after being dropped, expressed as a percentage of the total number of pouches dropped is the M-test value for the film.
2 This case was upheld on appeal at (1997), 77 C.P.R. (3d) 126 (F.C./A.)