In Bauer Hockey Corp. v. Easton Sports Canada Inc. (2010 FC 361), the Federal Court (“FC”) held Easton Sports Canada Inc. (Easton) infringed, and induced others to infringe, plaintiff Bauer’s Canadian Patent No. 2302953 (“the ’953 patent”) claiming an improved skate having a one-piece quarter section. The FC found all skates manufactured by Easton using a claimed “F” pattern were infringing since these skates featured all of the essential elements claimed in the ’953 patent design.

Claim Construction

The FC found the ’953 patent’s inventive concept to be the combination of a one-piece quarter that covers the heel and the ankle of the wearer with a separate upper ankle tendon guard attached side-by-side to the one-piece quarter to make a skate boot with an angular profile formed at the point of attachment. Plaintiff Bauer contended the method of attachment of tendon guards in a side-by-side fashion was not an essential element of the claim because at the time of publication it would have been obvious to a person having ordinarily skilled in the art that whether the tendon guard was attached side-by-side or with a slight overlap would not have made a difference to the skate’s angular profile, rigidity or functionality. The FC disagreed and held the attachment of tendon guards in a side-by-side fashion constituted an essential element of the claim, limiting its scope, and skates lacking this essential element did not infringe the ’953 patent. The FC, however, found that all the skates made using the F pattern included all of the essential elements of the ’953 patent and were infringing.

Anticipation and Utility Challenges

Bauer employed a “test league” comprising both Bauer employees and players from outside the company where Bauer equipment was tested under game conditions. All equipment was collected at the end of every game and non-Bauer employees signed contracts or non-disclosure agreements. The FC held Easton had not established sufficient disclosure occured under section 28.2(1)(a) of the Patent Act to prove anticipation as there must be a full disclosure of the claimed invention and no trial and error is permitted. The FC held that since “the skates in question were not available for testing or dismantling by anybody present” it could not be concluded that a mere visual inspection during test league operations would have enabled one to write down a clear and unambiguous description of the invention claimed in the patent.

While there is no need for a patent to describe the utility of the invention, Easton argued that if a party chose to extol certain advantages of the invention, it must deliver such results. The FC agreed that results or advantages included in the claims must be met. However Easton contended that the same rule applies to all other promises made. Bauer submitted that the rule should not be applied as strictly to a simple description in the disclosure of the benefits of an invention like the ’953 patent. The FC held that there was, at the time of the invention, an issue with respect to matching the portions of the quarter pieces of a skate boot. The solution provided by the one-piece quarter is superior to the solutions used in the industry up until then, for it is not subject to human error. Thus Easton’s claim that Bauer’s promises went unfulfilled failed.

Infringement by inducement and procurement

The FC stated “a person who induces or procures another to infringe a patent is itself responsible for infringement of the patent”. Applying this law to Easton, and the manufacturer of its skates, Rock Forest, the FC stated:

• The acts of infringement must have been completed by the direct infringer – Rock Forest;
• The completion of the acts of infringement must be influenced by the acts of the alleged inducer – Easton; therefore, without said influence, the infringement would not otherwise take place; and
• The influence must knowingly be exercised by the inducer – meaning that the inducer must know that his influence will result in the completion of the acts of the infringement.

First, the FC found Easton was fully responsible for the design of its skates, and since this included conception, making and adjusting the prototypes, “Easton was directly involved in the making or constructing of the infringing skates made at Rock Forest.” Second, the FC found Rock Forest’s infringement was influenced by Easton and that, without that influence, such infringement would not have taken place. Third, the FC concluded Easton knew its actions would result in Rock Forest making boots which had the essential elements of the ’953 patent.

Easton argued that it could only be found to have infringed if it had knowledge of the ’953 patent and in fact knew that the patent was valid and infringed by the skates made at Rock Forest. The FC rejected this argument stating “inducing or procuring another to make or construct a patented invention is not a tort distinct from that of infringement.” The FC found Easton liable for infringing the ’953 patent in respect of all the skates manufactured at Rock Forest under pattern F.

Remedies and Damages

Bauer was entitled to a permanent injunction to restrain the Easton from manufacturing, using or selling to others in Canada or inducing and procuring others to manufacture any infringing skate boots, and an order to deliver up any skate boots in its possession or under its authority and control. Easton was found liable to pay reasonable compensation to Bauer for the period between the time the ’953 patent’s application became open to public inspection to the grant of the patent.