DATE: 20020517
DOCKET: C37622

COURT OF APPEAL FOR ONTARIO

RE:

DANA CANADA INC. (Plaintiff/Respondent) -and- THE LUBRIZOL CORPORATION (Defendant/Appellant) -and- HENKEL CORPORATION (Defendant/Respondent)

BEFORE:

CATZMAN, ROSENBERG and CRONK JJ.A.

COUNSEL:

Peter E. Wells,

for the appellant

Michael Charles and, Anthony D. Cole

for the plaintiff/respondent

W. T. McGrenere,

For the defendant/respondent

HEARD:

May 16, 2002

On appeal from the judgment Justice Harry S. LaForme dated December 27, 2001.

E N D O R S E M E N T

[1] [1] The motions judge made several findings based on disputed facts, the most important being:

I find that it is not clear that the Lubrizol inventor intended to include anything other than magnesium in the claims.

Further, I find that magnesium was an essential component of the invention and that the variant of calcium and barium falls outside the monopoly claimed, in spite of the fact such a substitution apparently would have no effect on the way the Lubrizol invention worked.

[1] [2] As this court said in Aguonie v. Galion Solid Waste Material Inc. (1998), 156 D.L.R. (4th) 222 at 235:

In ruling on a motion for summary judgment, the court will never assess credibility, weigh the evidence, or find the facts. Instead, the court’s role is narrowly limited to assessing the threshold issue of whether a genuine issue exists as to material facts requiring a trial. Evaluating credibility, weighing evidence, and drawing factual inferences are all functions reserved for the trier of fact.

[2] [3] While the appellant’s expert’s evidence might have been clearer, or framed in more emphatic language, he was hampered by the fact that the respondents refused to disclose the exact composition of the Henkel product except on terms unacceptable to the appellant. The motions judge focused solely on paragraph 21 of Dr. Schroeck’s affidavit and made findings of fact about its intended meaning. With respect, that was not his function. He also had to consider all of the relevant evidence, including most importantly, paragraph 20 of the affidavit and the written answers provided pursuant to the order of Master Albert.

[3] [4] Moreover, the respondent Dana Canada Inc. had pleaded that the Henkel product was “the equivalent of Lubrizol hot-metal”. The respondent Henkel Corporation adopted this allegation, for the purpose of the cross-claim. The motions judge went beyond the function of a judge on a motion for summary judgment when he found that “nothing turns on the fact that Dana in its pleadings described the Lubrizol product and the Henkel product as being ‘equivalent’” and finding that “there is a difference between equivalent products and products that are the same for patent purposes”. All three parties pleaded in the alternative and it will be for the trial judge to decide the effect of the respondents’ admissions in their pleadings.

[4] [5] We do not consider it appropriate to order as counsel for the appellant requested, a declaration as between the parties to this action, that the appellant’s patents are valid.

[5] [6] The appeal is allowed, the judgment dismissing the counterclaim and cross-claim of the appellant is set aside and the motions for summary judgment are dismissed. The appellant is entitled to its costs of the appeal fixed in the sum of $10,000 inclusive of disbursements and GST. The appellant is entitled to its costs of the motion on the same scale as set out in the judgment of the motions judge. If the parties are unable to agree on costs of the motion, they may file brief written submissions within seven days of release of these reasons.

“Catzman J.A.”

“Rosenberg J.A.”

“Cronk J.A.”