After eight years of protracted litigation, a patent battle over detergent pods has left the patentee empty-handed.
On July 14, 2026, the Federal Court in Gemak Trust v Jempak ULC, 2026 FC 901 dismissed Gemak Trust’s patent infringement action against Jempak, a manufacturer of private label dishwasher detergent pods.
Gemak failed to prove infringement through its experimental testing evidence. The Court found that there were some problems with the actual experiments conducted by the experts as well as potential cross-contamination issues. Further, the evidence did not establish that the ingredients were in the claimed “blend”. The evidence did not discharge Gemak’s burden of proof for infringement.
The Court also held that the patent was invalid because the inventor withheld information about formulations that did not work, thereby failing to meet the disclosure requirements under the patent bargain. This may be considered a rare example of “Viagra Insufficiency” created by the Supreme Court in Teva v Pfizer, 2012 SCC 60, which has been oft-cited but almost never applied.
Rinse-and-repeat: the second crack at the patent
The procedural history of this case is long. Gemak sued in 2018, after the expiry date of the patent (Gemak claimed damages for the six-year limitation period before the claim up to the expiry date). Gemak claimed that several lines of products made by Jempak as private label dishwasher detergent pods for various retailers infringed its patent.
The asserted patent claims generally covered encapsulated percarbonate granules storable inside the PVA film pods, with the key element being a blend of sulphate, carboxymethyl cellulose (CMC), and a nonionic surfactant encapsulating (and thereby protecting) the percarbonate granules.
In 2019, Jempak moved for summary judgment or, alternatively, a summary trial to dismiss the action for non-infringement. In reasons reported at 2020 FC 644, the Federal Court originally granted summary judgment based on expert evidence on claim construction and on non-infringement, including experimental testing evidence filed by both parties, and declined to order the alternative summary trial.
However, in 2022, the Federal Court of Appeal granted Gemak’s appeal of the summary judgment decision, finding that the judge erred in making credibility findings that were not open to it (given that no witnesses testified live): 2022 FCA 141. The FCA also found some errors in the judge’s findings of common general knowledge and in the assessment of testing evidence. As a result, the FCA directed that the matter proceed to a full trial.
The new trial was heard by a different judge and dealt with both the issues of infringement and invalidity.
Infringement not established despite experimental testing evidence
As part of its infringement case, Gemak relied on experimental testing of Jempak’s products. Gemak had an expert conduct certain testing on the detergent granule surface layer to detect the presence of the claimed ingredients.
The actual composition of Jempak’s granules (and in particular, the surface encapsulation layer) could not be determined directly. Instead, the testing technique employed by Gemak’s expert was a “destructive process” involving dissolving the surface layer of the granules in a methanol solution to separate organic and inorganic materials, along with further chemical processing for analysis. This meant that the results could not distinguish where the ingredients came from relative to other ingredients.
Using a number of different analytical chemistry techniques, the experiments purported to reveal that the claimed ingredients sulphate, CMC, and a nonionic surfactant were present. However, the experiments conducted by Gemak’s expert were criticized by the Court for failing to include process and solvent blanks as controls, and the evidence revealed a potential source of cross-contamination of CMC (from using the same tweezers to handle the detergent and the target granules). The testing therefore could not rule out cross-contamination as the source of the CMC.
Further, the Court did not accept that the evidence showed a “blend” was formed to encapsulate the percarbonate. The only evidence to that effect was the opinion of the plaintiff’s expert, which did not include any direct evidence showing the presence of a blend as distinct from the mere presence of each of the ingredients independently. Since the destructive testing process did not preserve information about whether a blend was formed, and there was evidence that suggested other sources of CMC, this was not enough to meet the plaintiff’s burden.
The Court therefore dismissed the plaintiff’s infringement claim.
Patent invalid for insufficiency due to failure to uphold the patent bargain
Jempak alleged Gemak’s patent was invalid on numerous grounds, including anticipation, obviousness, insufficiency, overbreadth, and inutility.
At trial, however, Jempak’s invalidity expert apparently unraveled during cross-examination – by closing submissions, Jempak’s counsel asked the Court not to rely on its own expert evidence on invalidity. Despite this unexpected development at trial, Jempak continued to pursue its invalidity arguments based on other evidence.
The Court held that Jempak’s anticipation and obviousness arguments could not be sustained on the balance of probabilities without its expert evidence.
Nonetheless, Jempak succeeded in arguing that the inventor failed to meet the “patent bargain”. The inventor’s testimony revealed that he made and tested a number of different formulations with the four claimed ingredients, and that only some formulations worked while others did not (because they failed to be storable inside the PVA film pouch without bursting).
The Court held that “by withholding information about what worked and what did not, [the inventor] did not uphold his end of the patent bargain. The patent leaves the task of finding working formulations to the skilled person who is putting the invention into practice. [The inventor] did not uphold the patent bargain by putting the skilled person in a position to ‘make the same successful use of the invention’ as he could”. The patent was therefore held invalid.
The Court rejected overbreadth and inutility arguments on the same general factual basis.
Application of Teva v Pfizer insufficiency?
While the Court did not refer directly to the Supreme Court’s decision in Teva v Pfizer, 2012 SCC 60 in its reasons dealing with insufficiency, the two cases have some striking similarities.
In the Supreme Court decision, Pfizer’s Viagra patent was held to be invalid because Pfizer knew but failed to disclose which of the two individually claimed compounds in its patent were actually effective to treat ED. In Gemak, the inventor knew that some formulations did not work but failed to disclose that in the patent.
Many in the patent bar in Canada have suggested that in Teva v Pfizer, the Supreme Court created a separate basis of invalidity that was distinct from the typical insufficiency case. However, in nearly every subsequent case, the facts of Teva v Pfizer were said to be unique and were often distinguished on the basis that there was a knowing withholding of information. The Gemak v Jempak case appears to represent a rare example of this type of insufficiency allegation succeeding on the merits. This finding is made even rarer by the fact that insufficiency was the only basis for invalidity in this case, meaning that the Federal Court’s finding cannot be considered obiter dicta.
Takeaways
Gemak v Jempak is a reminder that in patent actions, trials are where cases are won and lost.
On infringement, the use of experimental testing is no guarantee of success. The factual and theoretical underpinnings and protocols used in an experimental testing program for litigation must be closely analyzed for potential defects. Here, the techniques used were held insufficient to establish a key claim element due to information lost through destructive testing, and the lack of proper controls allowed the defendant to question the reliability of the evidence.
On invalidity, expert evidence is always important but not always central. Jempak won without relying on its own expert (not without some irony, given the procedural history of the case). In its place, the inventor’s testimony (that only some formulations worked while others did not) carried the bulk of the weight, leading to a finding of insufficiency.