Bauer Hockey Corp. v. Easton Sports Canada Inc.
citation(s): 2011 FCA 83 (F.C.A. per Noel J.A., Letourneau & Trudel JJ.A. concurring)
The Federal Court of Appeal considered Easton’s appeal of a Federal Court holding that it had infringed Bauer’s Canadian Patent No. 2,302,935 (the ‘953 Patent) which relates to a skate boot.
5 As depicted by the drawing below, a skate boot generally consists of the following elements: quarter, tendon guard, tongue, toe box, eyelet facing, insole and outsole:
Of particular relevance for the purpose of this appeal are the quarter and the tendon guard.
6 The '953 Patent is entitled "Quarter for Skate Boot" and claims a particular construction of skate boot consisting in a one-piece quarter as well as a process to make it. The patent was applied for on September 4, 1998 and was granted on November 20, 2001. It expires on September 4, 2018.
7 The '953 Patent has seven claims. At the heart of both the appeal and the cross-appeal is claim 1 and in particular the second subparagraph thereof:
A skate boot comprising a sole, a front portion for enclosing a wearer's toes, a rear portion for enclosing a wearer's heel and ankle, and a medial and lateral portion for enclosing the sides of a wearer's foot, said rear portion and said medial and lateral portions comprising:
• a quarter medial portion and a quarter lateral portion integrally connected together in a one-piece construction and being folded at a symmetry line to form a U-shaped skate boot structure, each said quarter portions extending upwardly along said symmetry line defining a heel and ankle portion of said skate boot structure and extending outwardly from said symmetry line in a narrowing profile for defining both sides of said skate boot structure; and
• a tendon guard secured to said quarter medial portion and quarter lateral portion at a junction line in a side-by-side fashion thereby resulting in said rear portion of said skate boot having an angular profile defined by said tendon guard and said quarter medial and lateral portions at said junction line.
8 In the statement of claim filed in the Federal Court back in 2002 as later amended, Bauer alleged that a number of skate models manufactured and sold by Easton infringed its '953 Patent and that Easton induced and procured others, including Rock Forest, to manufacture the infringing skates (Fresh Amended Statement of Claim, Appeal Book, Vol. 1, pp. 143, 144, 147 at paras. 1c)(i) and 11). The trial took place over a period of eight days between November 2, 2009 and January 12, 2010.
9 By judgment rendered on August 26, 2010, the Trial Judge held that some 38 Easton skate models breached the '953 Patent. […] The judgment was accompanied by reasons covering more than 100 pages which deal with numerous issues, most of which are not being pursued on appeal.
10 The following summary of the reasons is limited to those parts of the reasons that are relevant to the questions which remain in issue and follows the order in which the Trial Judge addressed them.
11 After having identified the person skilled in the art and the common general knowledge available at the relevant time, the Trial Judge turned to the construction of claim 1. She identified the following as the first three essential elements of claim 1 (Reasons at para. 135):
• A one-piece quarter;
• A separate piece called the tendon guard attached to said quarter at a junction line; and
• An angular profile in the rear portion of the skate boot defined by the tendon guard and the quarter at said junction line.
12 The Trial Judge then addressed the question whether the method of attachment of the tendon guard to the one-piece quarter was also essential. She held that it was. Even though it was "evident that the inventor knew at the time that the tendon guard could be attached in an overlapping fashion, it is also evident that he chose to limit his monopoly to tendon guards attached in a side-by-side fashion ..." (Reasons at para. 143).
13 The Trial Judge went on to address the question whether Easton's skate models infringed the '953 Patent so construed. She found that the models where the tendon guard is attached to the one-piece quarter in a side-by-side manner (models using patterns A, E and F) did infringe the '953 Patent and that the models where the tendon guard was attached in an overlapping fashion (using pattern C) did not (Reasons at paras. 172, 179).
15 The Trial Judge then addressed Easton's contention that the '953 Patent was invalid on the basis of anticipation and obviousness. With respect to anticipation, Easton relied at trial on two events where skates embodying the essential features of the '953 Patent — the Vapor 8 prototype — were exhibited in public. Only one of those (i.e. the Test League) is relied upon on appeal. The Test League regrouped hockey teams composed of Bauer employees and others covered by a confidentiality agreement (Reasons at para. 212). Easton relied on the fact that the Test League games were open to the public to argue that the person skilled in the art could, as a spectator, observe the skates being worn by the players and identify the essential elements of claim 1.
16 The Trial Judge rejected this argument. She noted that the skates were not available for testing or dismantling by anybody present although they could be observed (Reasons at para. 216). In her view, the person skilled in the art attending a Test League game would not have been able to discern all the essential features of the invention. Applying the test for anticipation set out in Sanofi-Synthelabo Canada Inc. v. Apotex Inc., 2008 SCC 61,  3 S.C.R. 265 (S.C.C.) [Sanofi], she held that the invention claimed in the '953 Patent was neither disclosed nor enabled, and thus not anticipated (Reasons at paras. 219-221).
(Justice Noël first addressed claim construction and obviousness, and affirmed the Trial Judge’s holding with respect to these issues.)
64 I now turn to anticipation. Pursuant to section 28.2 of the Act, a patent is invalid if its subject-matter is disclosed by or through the inventor more than one year before the filing date of the patent. In Sanofi, the Supreme Court stated that a patent will be anticipated if its subject-matter is both disclosed and enabled. Although the Supreme Court was dealing with a genus patent in Sanofi, it expressly stated that subject to any limitations in the Act, the analysis for anticipation that it set out would be applicable to patents generally (para. 29).
65 Easton submits that the Trial Judge failed to view the Vapor 8 prototype tested during the Test League from the perspective of the person skilled in the art willing to understand and with the relevant common general knowledge in mind. It contends that from the perspective of such a person, a visual inspection of the Vapor 8 prototype was "more than sufficient to bring to mind the salient aspects of the inventive concept: the one-piece quarter, the angular profile and the separate tendon guard attached side-by-side" (Easton's memorandum at para. 58). The issue is thus whether the essential elements of the '953 Patent would have been revealed to the person skilled in the art attending a Test League game and observing the skates worn by the participants.
66 I pause here to say that the term "visual inspection" used by Easton as well as by the Trial Judge throughout her reasons is somewhat misleading in that it suggests that the skates were available for "careful scrutiny" or "close examination" (see the definition of "inspection", Shorter Oxford English Dictionary, Clarendon Press Oxford, Third Edition). They were not. As the Trial Judge makes clear, the skates were not available for testing (Reasons at para. 216) and the evidence shows that they could only be observed by persons attending the games as spectators or by persons coming onto or leaving the ice surface at the beginning and at the end of each game (Cross examination of Mr. Langevin, Appeal Book, Vol. 41, pp. 15620-15624).
67 As to the first alleged error, the Trial Judge was aware that the matter had to be viewed from the perspective of the person skilled in the art. At paragraph 212 of her reasons, she stated:
There was some dispute between the parties as to whether the relevant date here is September 4 or 5, 1997. There is no need for the Court to discuss this further given that it can have no impact whatsoever on the assessment of the defence, which is based on events [including the Bauer Test League] of prior use taking place in the summer of 1997 and involves the common general knowledge and prior art available at that time. ...
68 The subsequent finding that a person skilled in the art attending a Test League game could not have observed all the essential elements of the '953 Patent is one of fact which cannot be reversed absent a palpable and overriding error. In this respect, the Trial Judge found (Reasons at para. 219):
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).
She went on to hold that the Test League did not result in the invention being disclosed or enabled.
69 Easton made the argument that even if the side-by-side attachment could not be observed, the person skilled in the art would have deducted that this was the method used. The reasoning is that the tendon guard had to be attached to the quarter in one of two ways and since the side-by-side attachment was prevalent in the industry, the person skilled in the art would have concluded that this was the method used (PCME Limited at paras. 29-32).
70 Although there is logic to this proposition, it is not supported by the evidence which shows that overlapping attachments were just as popular, if not more. In this respect, many skates including the Bauer Supreme series, various Micron skates and Mega skates used overlapping attachments. Significantly, Bauer was the leading manufacturer of hockey skates in Canada at the time, with between 55% and 60% of the National Hockey League market, and between 35% and 50% of the North American Consumer market (Statement of Dr. Hoshizaki, Appeal Book, Vol. 4, p. 01207 at para. 59; Joint Agreed Statement of Facts, Appeal Book, Vol. 3, p. 01168 at para. 8). The evidence falls short of establishing that side-by-side attachments were prevalent in the industry.
71 Beyond this, the other findings made by the Trial Judge in support of her conclusion that the observation of the Vapor 8 prototype would not have revealed the invention to the skilled observer are amply supported by the evidence (see para. 68, above).