In Reinhard Delp v. Fresh Headies Internet Sales Ltd. et
al., 2011 FC 1228, the Federal Court considered a motion for
summary judgment brought by two of five defendants seeking
dismissal of a patent infringement action brought against them. As
described by the Court, the 815 Patent relates to methods and
devices for extracting resins from plants, including cannabis
The plaintiff, Reinhard Delp, inventor and patentee of Canadian
patent 2,321,815 (the "815 Patent"), brought a patent
infringement action against several companies claiming that they
infringed his rights under the patent by marketing the claimed
method to third parties.
Two of the defendants, Fresh Headies Internet Sales Ltd. and
Crystal Mountain Manufacturing, brought a motion for summary
judgment under Rules 213 and 215 of the Federal Court
Rules. They argued that the 815 Patent was invalid for
inutility because it claimed efficacy at a range of temperatures up
to 15ºC. The defendants claimed that Delp made admissions on
examination during his examination for discovery that the invention
did not work for certain plants at a temperature of 13ºC or
The Court held that a person skilled in the art would be capable
of optimally working the invention through some routine trial and
error and that the patent gave no promise of utility at all
temperature points within the range of 0°C to 15°C. In
assessing the scope of the claims, the Court noted that neither
party had led evidence describing the person skilled in the art,
and, more significantly, there was no expert evidence provided to
indicate how a person skilled in the art would interpret the patent
The Court considered the degree to which patent claims can be
permissibly broader than the effective scope of the invention in
terms of utility. Justice Barnes noted that the Supreme Court case
of Burton Parsons Chemicals Inc v. Hewlett-Packard (Canada)
Ltd,  1 SCR 555 and the House of Lords decision in
Henriksen v. Tallon Limited, (1965) RPC 434 HL (Eng) allow
for some adjustment by a person skilled in the art to work an
invention, stating it is a basic point that "where the scope
of a claim includes some method which is useless, the claim
cannot be saved by showing that no skilled person would ever try
that method," but that nevertheless, "a patent does not
fail simply because it leaves some room to the person skilled in
the art to employ suitable methods or materials."
Justice Barnes held that regardless of the interpretation of the
claims, the discovery responses given by Delp were not sufficiently
clear to meet the test for summary judgment. Along with there being
confusion regarding the part of the process to which Delp's
comments referred, Justice Barnes found that Delp's use of the
words "would not work" could have referred to a
sub-optimal performance, instead of a useless performance.
Justice Barnes noted that where the patent does not promise a
specific result, a sub-optimal performance may still be sufficient
to demonstrate a "mere scintilla" of utility. In the
result, the Court held that the evidence on the motion raised a
serious issue that could only be resolved at trial; consequently,
the court dismissed the motion for summary judgment.
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