Bauer Hockey Corp. v. Easton Sports Canada Inc.
citation(s): 2010 FC 361 (F.C. per Gauthier J.),  F.J.C. No. 431, aff’d 2011 FCA 83,  F.C.J. No. 331; online
The Plaintiff, Bauer Hockey Corp., is the owner of the [Canadian Patent No 2,302,953]. Its validity is challenged by the Defendant, Easton Sports Canada Inc.
Prior art skates comprised two sections stitched together at the rear of the skate.
The claimed invention was an improved hockey skate boot, having a one-piece quarter with an angular profile. The quarter is the piece of the skate that covers the heel and the ankle and is visible from the side or rear of the skate. The one-piece quarter avoided the stitch at the back of the skate, resulting in a stronger heel portion, which was easier to manufacture, more durable, and allowed for the skate to have a more angular profile. Presumably these attributes give the skater better positioning and support at the rear of the skate.
There were allegedly several public uses of the prototype skates that were said to be anticipatory, including the use of the prototype skates in a test league. The hockey players involved in the test league were either employees of Bauer or persons who had signed confidentiality agreements. As such, disclosure to these individuals did not amount to a public disclosure. However, the test league games took place in a public arena.
at paras 158-162 (on the caution that must be exercised when there is no common nomenclature in the art):
 Much was said about the so-called “explosions” used by Bauer. These are strictly internal documents. Recognizing that the Court (or the experts) cannot refer to extrinsic evidence to construe a patent, Easton’s counsel argued that these documents could at least be used to corroborate the views of their experts as to the common general understanding of a posita.
 First, the Court cannot accept this argument and does not view these explosions as having any bearing whatsoever on the determination to be made here, either in respect of the construction of the patent or with regard to whether the Vapor 8 embodied the invention.
 Second, Mr. Langevin made it very clear, and this was not contradicted, that these explosions were not prepared by the skate developers or pattern makers, but rather by the production people for the convenience of the sewing operators. This view was corroborated by Mr. Laferričre who went even further to say that these pieces could be given numbers or any name whatsoever, so long as everybody understood each other while working on the production floor. Mr. Laferričre made it clear that there was no uniform way of referring to pieces in the industry even within one company. When asked by the Court how one would understand each other when two colleagues from different companies communicated, Mr. Laferričre indicated that they would usually look at an actual skate to ensure a common understanding. This is in line with Mr. Tonkel’s evidence that, even in the footwear industry, companies refer to various parts by different names.
 The lack of precision in the nomenclature used by the various people in the industry is evident when one considers that Mr. Hall saw no problem in calling “overlays” (pieces or components normally added on top of the quarter) what one would usually refer to as “doublers” (which protect the layers added inside of the quarter). As mentioned earlier, there was also a lack of uniformity in the use of the term “upper” throughout the experts’ testimonies and reports. Mr. Chęnevert used the French word “empeigne” as the correct translation for “upper”, however, this word is defined in dictionaries as referring to the front portion of the foot rather than the rear and side portions.
 All of this is to show that there is no precise common technical definition for the term “tendon guard”. From this evidence, the Court can only make findings as to the general area where it would be found and, to some extent, its function, which are clearly suggested by the term itself – guarding or protecting the Achilles tendon.
at para 169 (on the burden of proof):
 Bauer has the burden of establishing on a balance of probabilities that Easton sold or made skates that take all of the essential elements of at least one claim in the ‘953 Patent (see Free World at para. 68).
at para 211-220 (on enablement and disclosure):
 Pursuant to paragraph 28.2(1)(a) of the Patent Act, “[t]he subject-matter defined by a claim in an application for a patent in Canada […] must not have been disclosed […] in such a manner that the subject-matter became available to the public in Canada or elsewhere”.
 In Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61,  3 S.C.R. 265, 298 D.L.R. (4th) 385 (Sanofi) the Supreme Court made it clear that in order for anticipation to occur, there must be a full disclosure of the claimed invention and, in that respect, no trial and error is permitted (para. 32).
 … It is clear from the evidence that the skates in question were not available for testing or dismantling by anybody present, let alone any member of the public. The skates were only available for visual inspection.
 There is little evidence as to what information would be conveyed by a visual inspection of the Vapor 8. …
 At best, this evidence would indicate that one would have information about the one-piece quarter, but this does not mean that one would have any information as to the other essential elements of the claimed combination, such as the side-by-side attachment of the tendon guard or the fact that the tendon guard would be a separate piece. This is especially so when one considers that the tendon guard in the Vapor 8 was of the same colour as the quarter. It is also clear that one could use the separate tendon guard attached in an overlapping fashion as opposed to a side-by-side junction to get the same “look”. Moreover, there is no evidence that one would not be led to believe that the skate was done with a single quarter going all the way up to the top of the Achilles tendon (as was later done in the CCM Vector skate).
 To use the words of Justice Aldous in Lux Traffic Controls Limited v. Pike Signals Limited,  R.P.C. 107 (Pat. Ct.) at p.132, which are quite apt to describe what the defendant had to establish to succeed:
In the case of a written description, what is made available to the public is the description and it is irrelevant whether it is read. In the case of a machine it is that machine which is made available and it is irrelevant whether it is operated in public. A machine like a book can be examined and the information gleaned can be written down. Thus what is made available to the public by a machine, such as a light control system, is that which the skilled man would, if asked to describe its construction and operation, write down having carried out an appropriate test or examination. To invalidate the patent, the description that such a man would write down must be a clear and unambiguous description of the invention claimed.
[Footnote and emphasis added.]
fn 133 In that case, a prototype of the product embodying the claimed invention was made available on numerous occasions to contractors over a 5 month period. Those contractors were free to examine it and test it. It is relevant to note that earlier in his decision Justice Aldous had noted that “[t]here is a difference between circumstances where the public have an article in their possession to handle, measure and test and where they can only look at it. What is made available to the public will often differ in those circumstances. In the latter case it could be nothing material; whereas in the former the public would have had the opportunity of a complete examination.”
 Again, what is claimed here is a combination of the elements discussed above and the Court is not prepared to conclude on the basis of the scant evidence before it that a visual inspection – without dismantling the skate – would have enabled one to write down a clear and unambiguous description of the invention claimed in the ‘953 Patent.
at para 223 (on the flexibility of the obviousness):
 As noted by the parties, and in particular Easton, the Supreme Court made it clear in Sanofi at paras. 61-64 that no one test should be dogmatically applied to all situations in considering obviousness. This means that the oft-quoted test from the Federal Court of Appeal judgment in Beloit Canada Ltd. v. Valmet Oy (1986), 8 C.P.R. (3d) 289, 64 N.R. 287 (F.C.A.) should not be treated as though it were a statutory prescription limiting the obviousness inquiry. It is also clear that the various criteria discussed by the Federal Court of Appeal in Janssen-Ortho Inc. v. Novopharm Ltd., 2007 FCA 217, 59 C.P.R. (4th) 116, 366 N.R. 290 at para. 25, and particularly the climate in the relevant field at the time the alleged invention was made, criteria which includes attitudes, trends, prejudices and expectations as well as secondary factors such as commercial success and meritorious awards, may still be relevant and are not inconsistent with the approach set out in Sanofi.
at para 289 (on promises implied by the claims):
 It is settled law that results or advantages included in the claims must be met. Similarly, in the context of selection patents where the advantages described are really the basis upon which the patentee is given the right to monopolize a substance or product already covered in a prior patent as part of a larger group of substances or products, the inventor will be held to its promise (Ratiopharm Inc. v. Pfizer Ltd., 2009 FC 711, 76 C.P.R. (4th) 241, 350 F.T.R. 250 (Pfizer (2009)).