Date: 20110308
Docket:
A-175-10
Citation: 2011 FCA 83
CORAM: LÉTOURNEAU
J.A.
NOËL
J.A.
TRUDEL
J.A.
BETWEEN:
EASTON SPORTS
CANADA INC.
Appellant
and
BAUER HOCKEY CORP. and
NIKE
INTERNATIONAL LIMITED
Respondents
REASONS FOR
JUDGMENT
NOËL J.A.
[1]
We
have before us an appeal and a cross-appeal from a judgment of Gauthier J. of
the Federal Court (the Trial Judge), wherein she held that Easton Sports Canada
Inc. (Easton) infringed Canadian Patent No. 2302935 (the ‘953 Patent) which
relates to a skate boot. The Trial Judge also concluded that Easton induced a
third party manufacturer, Les Chaussures Rock Forest Inc. (Rock Forest), to
infringe the ‘953 Patent.
[2]
In
support of its appeal, Easton submits that the Trial
Judge erred in failing to find that the ‘953 Patent is invalid based on
obviousness and anticipation. In the alternative, Easton submits that the Trial
Judge’s conclusion that it induced Rock Forest to infringe the ‘953 Patent was reached in
error.
[3]
In
support of its cross-appeal, Bauer Hockey Corp. and Nike International Limited
(collectively Bauer) submit that the Trial Judge misconstrued the ‘953 Patent
when she held that some of Easton’s skate models did not breach the ‘953 Patent
because they did not embody one of its essential elements.
[4]
For
the reasons which follow, I would dismiss both the appeal and the cross-appeal.
BACKGROUND
[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. She also held that Easton had partaken in the making of the
infringing skates in addition to inducing Rock Forest to manufacture these skates. 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.
DECISION OF THE FEDERAL
COURT
[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).
[14]
The
Trial Judge also considered whether Easton was involved in the manufacture of the
infringing skates. She first found that by making the pattern and the dye used
by Rock Forest to manufacture the
infringing skates, Easton was directly involved
in the making of these skates (Reasons at para. 190). However, given that the
argument at trial was directed at infringement by inducement, she focused her
analysis on this issue and found that Easton induced Rock Forest into
infringing the ‘953 Patent. In her words, “[t] here
is no evidence that but for its relationship with Easton, Rock Forest would have
made skates embodying the invention claimed in the ‘953 Patent.” (Reasons at
para. 191).
[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 Apotex Inc.
v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61, [2008] 3 S.C.R. 265 [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).
[17]
The
Trial Judge then addressed the issue of obviousness also by reference to the
test set out in Sanofi (at para. 65). Amongst the common general
knowledge and the prior art relied upon by Easton were two previously published patents. The
Trial Judge addressed both. Only one – the German Utility Model No. 9400085.9
registered on February 24, 1994 (the Chin Patent) – is relevant for the
purposes of this appeal. The Trial Judge rejected Easton’s argument that the
Chin Patent, when considered with other evidence of prior art, made the
inventive concept underlying the ‘953 Patent obvious. In particular, she held
that “there is no detailed evidence as to how this patent would be understood
by a [person skilled in the art] in 1994” (Reasons at para. 244).
[18]
According
to the Trial Judge the inventive concept underlying claim 1 (Reasons at para.
251):
… is the combination of a
one-piece quarter that covers the heel and the ankle of the wearer with a
separate 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.
[19]
At
paragraph 252 she identified the differences between the common general
knowledge and the prior art, and the inventive concept as follows:
There was no traditional
lasted or stitched skate boot with a one-piece quarter. Similarly, there was no
combination in any type of skate of a one-piece quarter with a separate tendon
guard let alone one where the tendon guard would be attached side-by-side to
the said quarter in a manner that creates an angular profile at the rear of the
skate boot.
[20]
Turning
to the last step in the Sanofi analysis for obviousness – i.e.
whether the difference identified would be obvious to the person skilled in the
art – she found that Easton had not discharged its
burden of establishing that these differences were obvious (Reasons at para. 284).
[21]
The
Trial Judge therefore rejected Easton’s defence based on invalidity.
ERRORS ALLEGED ON APPEAL
[22]
Easton submits that the Trial
Judge erred in finding that the ‘953 Patent was neither anticipated nor
obvious. In the alternative, it submits that the Trial Judge erred in finding
that it had induced Rock Forest to infringe the
‘953 Patent.
[23]
With
respect to obviousness, Easton submits that the Trial
Judge erred in her application of the last two steps of the analytical approach
set out in Sanofi. It contends that the common general knowledge
included a skate boot with all the essential elements of the patent, except for
the use of a one-piece quarter. According to Easton, the Daoust 101 and 501 brand skates,
which were filed as exhibits at trial, constitute the “closest prior art” (Easton’s memorandum at para.
38). Had the Trial Judge focused on this prior art, she would have been bound to
conclude that the inventive concept is limited to the substitution of a
one-piece heel construction for a two-piece quarter.
[24]
The
appellant adds that this substitution was obvious given the teachings of the
Chin Patent (Easton’s memorandum at para. 39). In this respect, Easton
submits that the Chin Patent “tells the notional skilled person that the
‘one-part rear boot section’ is the solution” to the problems with the prior
art which the ‘953 Patent addresses (Easton’s memorandum at para. 47). In sum, the Daoust
skates together with the Chin Patent reveal the four essential elements of the
‘953 Patent, and made the “invention” obvious.
[25]
Turning
to anticipation, Easton submits that the ‘953
Patent is anticipated by reason of the disclosure of Bauer’s Vapor 8 prototype
at the Test League. Easton contends that the Trial
Judge failed to consider the information that was available from a visual
inspection to a person skilled in the art using the common general knowledge.
According to Easton, such an inspection would
have revealed 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).
[26]
With
respect to the one-piece quarter, Easton contends that the “single wraparound aspect” of
the Vapor 8 prototype was intended to differentiate it from other skates and,
as such, the “visible one-piece quarter was thus intended by Bauer to be
noticeable”. Easton also points to the testimony of Mr. Chênevert that it was
evident that there was a one-piece quarter (Easton’s memorandum at paras. 59, 60).
[27]
Easton contends that the
angular relationship between the tendon guard and the quarter was also evident
from a visual inspection. Easton submits that applying the knowledge identified by the Trial
Judge about tendon guard to a visual inspection of the Vapor 8 skate boot, “it
is clear that it had a rearwarding-tilting profile and no vertical sew-line.
The inevitable conclusion for a person skilled in the art at the time would be
that such a skate had the more common of the two possible designs, i.e.
that the Vapor 8 prototype had a separate tendon guard” (Easton’s memorandum at para. 63).
[28]
With
respect to the side-by-side attachment, Easton submits that even if the line
where the tendon guard meets the quarter was hidden, “the evidence was that the
practice at the time was to connect a separate tendon guard to the quarter in a
side-by-side manner” (Easton’s memorandum at para. 64). If a disclosure teaches
two alternatives neither of which can be observed, the fact that the less
prevalent alternative does not anticipate should not render the more prevalent
alternative irrelevant. In this respect, Easton relies on the decision of Justice Laddie in PCME
Limited v. Goyen Controls Co. UK Limited, [1999] EWHC Patents 264 at paras.
29-32 [PCME Limited] (Easton’s memorandum at para. 67).
[29]
Easton adds that the Vapor 8
prototype, given that it revealed all the essential elements of the invention,
should also have informed the Trial Judge’s obviousness analysis (Easton’s memorandum at para.
72).
[30]
Turning
to the finding that it induced Rock Forest to infringe, Easton submits that the
Trial Judge “applied the wrong legal test by not considering whether there was
evidence that Easton had benefited in any way by such sale of skates in the
United States by Easton U.S.” (Easton’s memorandum at para. 74). Relying on Dableh v. Ontario
Hydro, [1996] 3 F.C. 751 (C.A.) Easton contends that there is a requirement that the
party must benefit from the infringing acts in order for a finding of
infringement by inducement to be made. In the present case, there is no
evidence that it benefited in any way when Rock Forest sold skates to Easton
U.S. Easton submits that in these circumstances, there is no basis in law for
the “but for” test applied by the Trial Judge (Slater Steel Industries Ltd.
et al. v. R. payer Co. Ltd. et al., (1968) 55 C.P.R. 61 (Exch. Ct.) at p.
76).
ERRORS ALLEGED ON
CROSS-APPEAL
[31]
Bauer
submits that the Trial Judge erred in determining that a side-by-side
attachment is an essential element of claim 1. Relying on Free World Trust
v. Électro Santé Inc., 2000 SCC 66, [2000] 2 S.C.R. 1024 [Free World
Trust], Bauer points out that the two conditions set out in that case in
order for an element of a claim to be considered non-essential – (i) that on a
purposive construction of the claim, the element was clearly not intended to be
essential or (ii) that at the date of publication, the skilled addressees would
have appreciated that a particular element could be substituted without
affecting the working of the invention – are set out in the alternative
(Bauer’s memorandum at paras. 124-126). Bauer submits that the Trial Judge
rendered her decision based on the first condition and ignored the second
(Bauer’s memorandum at para. 132).
[32]
Bauer
submits that it has discharged its onus of establishing substitutability or
equivalence of the two modes of attachment (side-by-side or overlapping) at the
date of publication. Bauer first notes that a side-by-side attachment was not
novel or inventive at the time of the publication of the ‘953 Patent. It
submits that persons skilled in the art would understand that this requirement
could be varied slightly without negatively impacting the way the invention worked
(Bauer’s memorandum at para. 133). Bauer further submits that the evidence of Easton’s witnesses (MM.
Laferrière, Hall and Goldsmith) during cross-examination supports this view
(Bauer’s memorandum at paras. 133-137).
[33]
According
to Bauer, the Trial Judge applied the test set out in Improver Corp. v.
Remington Consumer Products Ltd., [1990] F.S.R. 181 (U.K. Pat. Ct.) rather than the one
set out in Free World Trust. She required that known and obvious
substitutability of the two attachment techniques be demonstrated in
addition to establishing that a reader skilled in the art would have
understood that the patentee did not intend that strict compliance with the
primary meaning was an essential requirement of the invention (Bauer’s
memorandum at paras. 119-128).
[34]
Bauer
submits that it has met the second condition identified in Free World Trust
(Easton’s memorandum at paras.
138, 139). In any event, it submits that the first condition is also met (Easton’s memorandum at paras.
140, 141).
ANALYSIS AND DECISION
[35]
It
is useful to recall that questions of law are reviewed on a standard of
correctness. The construction of claim 1 gives rise to a question of law as
does the identification of the proper legal test for obviousness and
anticipation. Factual findings made in applying these tests cannot be reversed
absent a palpable and overriding error (Housen v. Nikolaisen, 2002 SCC
33, [2002] 2 S.C.R. 235).
The cross-appeal
[36]
The
cross-appeal being aimed at the Trial Judge’s construction of claim 1 should
first be addressed since the subsequent findings of infringement and validity
are based on this construction.
[37]
Bauer’s
contention simply put is that on a purposive construction of claim 1, the
side-by-side attachment was clearly not intended to be an essential element and
that, in any event, the skilled addressee would have understood that an
overlapped attachment could be substituted without affecting the invention.
[38]
In Whirlpool
Corp. v. Camco Inc., 2000 SCC 67, [2000] 2 S.C.R. 1067, the Supreme Court
of Canada stated at paragraph 45 that:
[t]he key to purposive construction is …
the identification by the court, with the assistance of the skilled reader, of
the particular words or phrases in the claims that describe what the inventor
considered to be the “essential” elements of his invention …
[39]
In Free
World Trust, Binnie J. set forth the following propositions with respect to
patent construction (para. 31):
(a)
The Patent Act
promotes adherence to the language of the claims.
(b) Adherence to the language of the claims
in turn promotes both fairness and predictability.
(c)
The claim language
must, however, be read in an informed and purposive way.
(d) The language of the claims thus construed
defines the monopoly. There is no recourse to such vague notions as the “spirit
of the invention” to expand it further.
(e)
The claims language
will, on a purposive construction, show that some elements of the claimed
invention are essential while others are non-essential. The identification of
elements as essential or non-essential is made:
(i)
on the basis of the
common knowledge of the worker skilled in the art to which the patent relates;
(ii)
as of the date the
patent is published;
(iii)
having regard to
whether or not it was obvious to the skilled reader at the time the patent was
published that a variant of a particular element would not make a difference to
the way in which the invention works; or
(iv)
according to the
intent of the inventor, expressed or inferred from the claims, that a
particular element is essential irrespective of its practical effect;
(v)
without, however,
resort to extrinsic evidence of the inventor's intention.
(f) There is no
infringement if an essential element is different or omitted. There may
still be infringement, however, if non-essential elements are substituted or
omitted.
[Emphasis
by Bauer]
[40]
Although
Bauer correctly points out that the conditions on which it relies in the above
passage are set out in the alternative, it has failed to show that the Trial
Judge overlooked either of these conditions.
[41]
The
ultimate conclusion reached by the Trial Judge on the construction of claim 1
is set out at paragraph 143 of her reasons:
Having
considered the wording of claim 1 and its dependent claims, and although it is
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 at the
junction line between the lower edge of the tendon guard and the upper edge of
the quarter.
[Emphasis added]
[42]
As
noted by the Trial Judge, the common general knowledge at the relevant time was
that there were two methods for attaching or securing the tendon guard to the
quarter. The
language of claim 1 refers to one of those methods and does not allude to the
other. That is the context in which the issue presents itself.
[43]
Given
that there were two methods for securing the tendon guard to the quarter and
assuming, as Bauer contends, that these methods were equivalent or
interchangeable, the patentee could have referred to both methods of
attachment. Alternatively, claim 1 could have been drafted by stating that the
tendon guard “may” be secured in a side-by-side fashion or simply that the
tendon guard is “secured” to the quarter without reference to either method.
Instead, claim 1 refers to “a tendon guard secured … in a side-by-side
fashion …”.
[44]
Significantly,
Bauer’s expert, Dr. Hoshizaki, stated the following with respect to a
side-by-side attachment (Appeal Book, Vol. 4, pp. 1209, 1210 at para. 66):
With respect to the attachment of the
tendon guard to the quarter, the inventor recognized that this provided an
advantage as well, as connecting the tendon guard to the one piece quarter in
a side-by-side (or end-to-end) fashion eliminated the extra material associated
with overlapping the two components. This helped to decrease the overall weight
of the skate (page 1, lines 26-28 and page 4, lines 15-16). In addition, in the
industry, when two pieces of material are connected in an overlapping fashion,
the ends of the material are usually sanded down or “skived” at the ends to be
connected, in order to reduce the overall thickness of the joint and eliminate
the possibility of a “bump” where the pieces are connected. By connecting the
tendon guard and quarter in a side-by-side fashion, there was no need to skive
the material and thus a manufacturing step was eliminated. Finally, when
the two components were skived prior to joining, the material was thinner at
the point of connection, which often resulted in a weaker connection that could
be subject to failure. A side-by-side connection does not have the same problem.
[Emphasis
added]
[45]
Although
Dr. Hoshizaki was quick to add that a side-by-side construction merely served
to optimize the invention and was no more than a preferred embodiment or
variant (Appeal Book, Vol. 4, p. 1218 at para. 91), the Trial Judge saw the
matter differently.
[46]
As
she notes, the person skilled in the art knew at the relevant time that it was
desirable to decrease the weight of the skates by using as little material as
possible (Reasons at paras. 237, 238). It was also desirable to reduce the
manufacturing operations to as few steps as possible (Examination of Dr.
Hoshizaki, Appeal Book, Vol. 35 at pp. 14342:17-14348:9; Vol. 36 at pp. 14416:16-14417:8).
The decision to use a side-by-side attachment has a bearing on both these
factors. Beyond reducing the material and hence the weight, it eliminates the
need to skive in order to smooth off the lip which an overlapping connection
creates.
[47]
The
Trial Judge also accepted that this skiving operation results in a
weaker connection that could be subject to failure. In the words of the Trial
Judge, “there is no dispute that the advantage [of a side-by-side connection]
is real …” (Reasons at para. 298).
[48]
Reading claim 1 against this
background, the Trial Judge rejected Bauer’s contention that the person skilled
in the art would read claim 1 as referring to one of two interchangeable
methods of attachment. Giving effect to the words of claim 1 while taking into
account the advantages which a side-by-side attachment were known to procure,
she held that the monopoly claimed had, as one of its essential elements, the
attachment of the tendon guard to the quarter at the junction line in the
manner described in claim 1.
[49]
Counsel
for Bauer insisted on the fact that the advantages that could be derived from
this mode of attachment were minor. He acknowledged the importance of
decreasing the weight but emphasized the very small impact which a side-by-side
attachment would have in contrast with an overlapping connection. According to
counsel, the person skilled in the art would understand that, as a practical
matter, the methods of attachment were equivalent.
[50]
However,
weight decrease was not the only advantage and even then, the
evidence shows that at the relevant time no weight decrease was considered too
small in the skate industry. As Bauer’s representative on discovery made clear,
“every area of weight reduction was considered, whether it was a gram here or a
gram there” (Examination on discover of Mr. Ken Covo, Appeal Book, Vol. 10 at
p. 3807).
[51]
When
regard is had to the state of the art, the nature of the invention and the
wording of claim 1, it seems clear that the person skilled in the art would
read the mode of attachment which it specifies as an essential element.
[52]
Counsel
for Bauer complained, perhaps rightfully, that this element is such that it
allows for the ‘953 Patent to be by-passed with relative ease. He refers in
particular to the fact that Easton decided to make the switch to an overlapped attachment
“over a cup of coffee”, and that this “solution” was implemented quickly and
with ease (Cross-examination of Ned Goldsmith, Appeal Book, Vol. 46 at p.
17320).
[53]
I
accept that a side-by-side attachment, if essential, makes the ‘953
Patent vulnerable. However, viewed from this perspective, the problem
identified by counsel falls squarely within the words of Binnie J. in Free
World Trust at paragraph 51:
… if the
inventor has misspoken or otherwise created an unnecessary or troublesome
limitation in the claims, it is a self-inflicted wound. The public is entitled
to rely on the words used provided the words used are interpreted fairly
and knowledgeably.
[54]
In
this case, a fair and purposive interpretation of claim 1 makes it clear that
securing the tendon guard to the quarter by a side-by-side attachment is an
essential feature of the claim. It follows that the cross-appeal cannot
succeed.
The appeal
[55]
The
first branch of the appeal is based on obviousness. In this respect, section
28.3 of the Patent Act, R.S.C. 1985, c. P-4 (the Act) provides:
|
28.3 The subject-matter defined by a claim in an
application for a patent in Canada must be subject-matter that would not have been obvious on the
claim date to a person skilled in the art or science to which it pertains,
having regard to
(a) information disclosed more than one year
before the filing date by the applicant, or by a person who obtained
knowledge, directly or indirectly, from the applicant in such a manner that
the information became available to the public in Canada or elsewhere; and
(b) information disclosed before the claim
date by a person not mentioned in paragraph (a) in such a manner that
the information became available to the public in Canada or elsewhere.
|
28.3 L’objet que définit la revendication d’une
demande de brevet ne doit pas, à la date de la revendication, être évident
pour une personne versée dans l’art ou la science dont relève l’objet, eu
égard à toute communication :
a) qui a été faite,
plus d’un an avant la date de dépôt de la demande, par le demandeur ou un
tiers ayant obtenu de lui l’information à cet égard de façon directe ou
autrement, de manière telle qu’elle est devenue accessible au public au
Canada ou ailleurs;
b) qui a été faite
par toute autre personne avant la date de la revendication de manière telle
qu’elle est devenue accessible au public au Canada ou ailleurs.
|
[56]
In Sanofi,
the Supreme Court of Canada sanctioned the test developed in England in Windsurfing International Inc. v. Tabur Marine (Great
Britain) Ltd., [1985] R.P.C. 59 (C.A.) as
restated in Pozzoli SPA v. BDMO SA, [2007] F.S.R. 37, [2007] EWCA Civ
588:
67 It will be useful in an
obviousness inquiry to follow the four-step approach first outlined by Oliver L.J.
in Windsurfing International Inc. v. Tabur Marine (Great Britain) Ltd.,
[1985] R.P.C. 59 (C.A.). This approach should bring better structure to the
obviousness inquiry and more objectivity and clarity to the analysis. The Windsurfing
approach was recently updated by Jacob L.J. in Pozzoli SPA v. BDMO SA,
[2007] F.S.R. 37, [2007] EWCA Civ 588, at para. 23:
In the result I
would restate the Windsurfing questions thus:
(1) (a)
Identify the notional “person skilled in the art”;
(b)
Identify the relevant common general knowledge of that person;
(2) Identify
the inventive concept of the claim in question or if that cannot readily be
done, construe it;
(3) Identify
what, if any, differences exist between the matter cited as forming part of the
“state of the art” and the inventive concept of the claim or the claim as
construed;
(4) Viewed
without any knowledge of the alleged invention as claimed, do those differences
constitute steps which would have been obvious to the person skilled in the art
or do they require any degree of invention?
[57]
Easton submits that the Trial
Judge erred in her application of steps 3 and 4 of the analysis set out in Sanofi.
With respect to step 3, Easton contends that the Trial
Judge failed to identify the difference between the inventive concept and what
it now describes as the “closest prior art”. The Daoust 101 and 510 models
which were part of the general knowledge at the relevant time are said to be
the closest prior art. According to Easton, they embody three of the four essential
elements of the ‘953 Patent, i.e. a tendon guard attached to the quarter
at a junction line; an angular profile in the rear portion of the skate boot
defined by the tendon guard and the quarter at the said junction line; and the
tendon guard attached to the quarter in a side-by-side fashion at the junction
line.
[58]
Easton further submits that
the remaining essential feature – the one-piece quarter – is revealed by the
Chin Patent which, although it did not form part of the general knowledge
(Reasons at para. 226), was available to the public. According to Bauer, the
only difference between the Daoust skates and the inventive concept is the
substitution of the two-piece quarter for a one-piece quarter, as taught by the
Chin Patent.
[59]
Based
on the foregoing, counsel for Easton took the novel position that the only
question which had to be addressed was whether it would have been obvious to
the person skilled in the art to adapt the Chin Patent to the Daoust skates or
vice versa.
[60]
The
Trial Judge did not address this question as the case before her was not argued
on this basis. Counsel for Easton (who had no involvement in the Trial) acknowledged so much.
Although the Daoust skates were part of the prior art, they were given no
particular significance during the trial. Bauer produced them as exhibits after
Easton’s expert reports had
been filed. No additional reports were sought to be produced by Easton with the result that
none of its experts relied on the Daoust skates.
[61]
Given
this argument, counsel for Bauer took a closer look at the Daoust skates
(Bauer’s memorandum at para. 48). Although the Trial Judge indicated in her
judgment that the Daoust 101 and 501 skates had a side-by-side tendon guard,
neither skate was dismantled at trial to remove the outer overlay pieces and
expose the quarter and tendon guard. Upon doing so, counsel was able to
demonstrate before us that in the Daoust 101 skate, the two-quarter pieces and
tendon guard were overlapped, while the Daoust 501 skate had a two-piece
quarter with an integrated tendon guard (Bauer’s memorandum at para. 48).
[62]
In
the course of his reply, counsel for Easton took the position that the inner structure of
the Daoust skates should not be considered as it was not before the Trial
Judge. In my view, it is not open to Easton to raise this objection since it is clear that
this evidence would have been brought to the attention of the Trial Judge if
the issue had been raised before her. As the argument is only now being raised,
there is no bar to this Court taking cognizance of this evidence on appeal.
Indeed, if the objection was to be maintained, the only alternative would be to
prevent Easton from raising its new
argument at this stage as it would clearly be prejudicial to Bauer.
[63]
Based
on this evidence it is apparent that the Daoust skates do not have a tendon
guard that is attached in a side-by-side fashion in the manner claimed by the
‘953 Patent. Given that Easton’s case with respect to
obviousness rests on the premise that the combination of the Chin Patent and
the Daoust skates reveals all the essential elements of claim 1, this suffices
to dispose of this aspect of the appeal.
[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. …
[Emphasis
added]
[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).
[72]
Finally,
Easton submits, in the
alternative, that the Trial Judge applied the wrong test in holding that it
induced and procured infringement. Specifically, she failed to consider that
the skates were ordered and purchased by Easton U.S. from Rock Forest and that it did not benefit from the
transactions. In that context, the fact that the infringing skates could not have
been produced “but for” Easton’s involvement is
irrelevant.
[73]
There
is no need to address this issue. As counsel for Bauer reminded us, the Trial
Judge also found that Easton was a direct
participant in the manufacture of the infringing skates (Memorandum of the
respondent at paras. 81, 82). This finding, which Easton has not addressed, is
equally dispositive of the issue of infringement.
[74]
Although,
as she observed, the argument at trial was devoted exclusively to induced
infringement (Reasons at para. 191), the Trial Judge noted that the statement
of claim clearly alleged that Easton was (also) engaged in the manufacture of the infringing
skates (idem, footnote 121). After considering the evidence, she found
that (Reasons at para. 190):
If making
a skate includes, as I believe it does, the conception of the skate boot,
making and adjusting the patterns and the prototypes and having dyes for
cutting the pieces, there is no doubt in my mind that Easton was directly
involved in the making or constructing of the infringing skates made at Rock
Forest.
[Emphasis
added]
[75]
Later
on she found that Easton, through its employees,
had actually taken part in the manufacture (Reasons at para. 205):
… Here,
through Mr. Laferrière’s involvement (as well later as that of Mr. Daniel
Chartrand), Easton was actually participating in the making of the skates
that are now found to infringe. (Footnote omitted)
[Emphasis
added]
[76]
The
formal judgment gives effect to both the finding of inducement and the finding
of direct infringement since it holds that Easton infringed the ‘953 Patent by “selling or
manufacturing or inducing and procuring etc.” (Judgment at para. 1). It follows
that before asking the Court to address its new argument, Easton had to either challenge
the finding of direct infringement or explain why effect should not be given to
it. Having done neither, this finding is dispositive of the issue of
infringement.
[77]
I
would dismiss both the appeal and the cross-appeal. Given the divided result, I
would make no order as to costs.
“Marc Noël
“I
agree
Gilles Létourneau J.A.”
“I
agree
Johanne Trudel J.A.”
Email this Content