Bauer v. Easton In Bauer Hockey Corp. v. Easton Sports
Canada Inc. 2011 FCA 83 (hereinafter Bauer v.
Easton), the Canadian Federal Court of Appeals considered an
appeal from Easton that it had infringed Bauer's patent
pertaining to a skate boot and induced a third-party manufacturer
to do the same. It was also Easton's position that the trial
judge had erred in finding the patent was not invalid on the basis
of anticipation and obviousness. Bauer cross appealed from a
portion of the trial judgment that some of Easton's skate
models did not breach its patent.
The Court made several determinations including that Bauer's
patent was not anticipated on the basis that a company sponsored
Test League comprised of Bauer employees and others wearing
prototype skates made by the company in a public facility did not
by itself effect an enabling disclosure of the inventive elements
of the prototype skates, and did not itself act as a bar to
patentability. This aspect is the focal point of this paper.
In the Bauer v. Easton case, prototype hockey skates
were worn in a Test League game played in an arena open to the
public outside of the one-year grace period permitting prior
disclosures by the inventor. The prototypes had the following novel
elements: a single piece quarter or lower shell (i.e., the
back or heel portion of the boot above the sole and below the
tendon guard), a tendon guard attached edge-to-edge to the top of
the quarter, forming an angle between the heel pocket and the
tendon guard. These were in fact the essential elements of the
Bauer patent which was being enforced in infringement proceedings
against Easton in the action.
The court held that a person skilled in the art would not, by
observation of the skates on the feet of skaters, be able to
understand all of these essential elements. While the court found
that the single piece quarter which wrapped around the heel in a
seamless fashion, might have been observable and that the color of
the tendon guard and the quarter were the same (black) making the
exact determination of the angle of attachment difficult but not
impossible to discern, the edge-to-edge stitched connection between
the quarter and the tendon guard could not possibly have been
determined by observation of the skates in use. Without being able
to disassemble the skates, their internal construction, including
the way the two pieces were attached, was not discernable.
This despite Easton's argument that there were really only
two ways of attaching the tendon guard to the quarter:
non-overlapping edge-to-edge, or taperedoverlapping seams.
There was thus no enablement of a person skilled in the art
seeing the skate to replicate all of the essential elements of the
invention. Consequently, there was no anticipation as a result of
the public disclosure at the Test League game.
Edge cases like this one are interesting to provide examples of
prior art which might or might not form a bar to patentability
based upon prior public disclosure.
This case also dealt with inducement to infringe (by providing
infringing designs, by participation in infringing manufacturing),
as well as included good restatements of rules about purposive
claims construction and the use of the construct of essential
elements to delineate what is infringing versus what can be
substituted without infringement.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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