Skating Around the Issue of Prior Public Disclosure

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.

Discussion

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 colour 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 tapered-overlapping 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.

Conclusion

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.