Tuesday, June 6, 2023

Summary Judgment Denied

Meridian Manufacturing Inc v Concept Industries Ltd 2023 FC 20 Zinn J

3,036,430 / Hopper Bottom for Storage Bin

In this brief decision Zinn J dismissed a motion for summary judgment, essentially on the basis that there were disputed factual issues related to both infringement and validity which would likely turn on the credibility of various witnesses [49], [54].

We have seen something of a resurgence in the use of summary disposition in patent cases, starting with Manson J’s decision in Canmar 2019 FC 1233 (here) affd 2021 FCA 7 (here), but we have also seen some pushback, notably in Gemak 2022 FCA 141 (see here): [122]–[124]. The trial judge has quite a lot of de facto discretion in deciding whether to grant summary disposition, and of course, even in a more favourable regime some summary disposition motions will be denied, and vice versa. So each case is an exercise in reading the tea leaves to try and tell whether it signals a trend.

It’s hard to get a read on those tea leaves in this case. Zinn J pointed to specific defects in the evidence, eg it was not clear whether a device that was allegedly anticipatory was part of the prior art [54]. That’s a good reason to deny summary disposition even with a more permissive regime, but on the other hand, if he had been so inclined, he might have proceeded nonetheless, relying on the principle that the parties must put their best foot forward.

Also, I must say I found some aspects of the decision a bit hard to understand. One of the issues where Zinn J found a fundamental disagreement was regarding the essential elements of the claims: “Specifically, [the parties] disagree on whether claims 3 and 7 are essential” [46]. What’s strange here is that essentiality has to be decided on a claim by claim basis, and it is claim elements that are essential or otherwise, not the claim itself: Shire 2021 FCA 52 [55]. Further, there was a dispute as to “[w]hether the ‘solid inner wall’ is an essential component,” and this was crucial to the infringement issue [47]. But so far as I can tell, the term “solid inner wall”—which Zinn J placed in quotes—does not appear in the claims, or anywhere at all in the patent. Presumably the phrase was being used as a shorthand for a claim element and the parties would know which element was at issue. But it does make the decision hard to interpret.

So, at the end of the day, we have another decision refusing to grant summary judgment, and I’m not sure how much more we can extract from those tea leaves.

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