ipatents.ca: Patent Stories

CBA Quarterly Case Summaries

The Canadian Bar Association, IP Section, has released a new set of case summaries (for January - March 2010).

Link to previous quarter’s cases.

TMOB to reform opposition procedures

CIPO has today announced a new consultation regarding trade-mark opposition procedures.

The proposal aims to reduce the time for cross-examinations, do away with reply evidence as of right, permit service by email, and reduce the Office’s burden of sending due date notices.

The consultation is open until September 20, 2010.

CIRA consultation details

The CDRP Consultation backgrounder has been posted including a summary of CDRP decisions, a comparative analysis of the CDRP to other DRPs, and a link to the consultation site.

Here is a link to the consultation questions, divided into these sections:

1. Mandatory Requirement for Three Panelists
2. Fees for CDRP CDRP Dispute Providers, Panelists and Decisions
3. Requirements for Filing a CDRP Complaint
4. CDRP Three Part Test
5. Remedies
6. Implementation of Decisions
7. Mediation
8. Appeal Process
9. Paperless Filings
10. Improvements to the Website
11. General

Hockey Night in (the Federal Court of) Canada

Bauer, a hockey skate manufacturer owned by Nike, has successfully convinced a Federal Court Judge that its Canadian Patent No. 2,302,953, covering a skate boot with an improved “quarter”, was valid and infringed by Easton.

Bauer sued Easton in 2002 and the case went to trial before Justice Gauthier.

The trial was held between November 2009 and January 2010, resulting in a decision dated April 1, 2010.

Francois Guay led the team from Smart & Biggar on behalf of Nike, and Guy Pratte represented Easton along with colleagues from BLG. An appeal on behalf of Easton has been commenced by Bruce Stratton of Dimock Stratton, with Smart & Biggar filing a cross-appeal on behalf of Nike.

This was a “straight up” patent infringement and validity trial. The issues were: claim construction, infringement (including inducement to infringe), and validity.

All 7 claims of the ‘953 patent were in dispute. The Judge held that only one of Easton’s two main skate product lines infringed the patent. An essential element of the patent claims was missing from the second product line at issue.

Supplier was induced to infringe. Nike alleged that Easton should be liable for inducing its supplier to infringe the patent. There was evidence that an Easton employee worked out of an office at the supplier’s premises, that Easton was responsible for the infringing skate’s design, and owned some of the manufacturing equipment. In obiter, the Judge wondered aloud why Nike did not pursue a claim of direct infringement, as Easton was so heavily involved in the supplier’s activities. In the “very unique” circumstances of the case, the Judge found that the 3-part test for inducing infringement was met.

No enabling disclosure. Easton alleged that Nike’s patent was anticipated. The Judge disagreed. Nike had allowed NHL players to test prototypes of the Vapour 8 skate in a public arena before the claim date of the patent but the Judge concluded that any such “visual inspection without dismantling the skate” could not be enabling as required by Sanofi.

Not obvious. The Judge said it was “difficult” to evaluate obviousness given the simplicity of the invention in retrospect and the absence of evidence of motivation (the Judge dismissed Easton’s argument that it was simply a design or aesthetic choice). The Judge observed that the inventive concept included a one-piece quarter which had some advantages in terms of cost and weight. The prior art did not disclose a one-piece quarter.

Though the Judge held that exceptional commercial success is not determinative, the Judge made three observations regarding the climate of the invention. The Judge observed that: 1) the relevant prior art was 15-20 years old and did not use the one-piece quarter; 2) the one-piece quarter would have been simple to implement; and 3) the one-piece quarter has since been widely adopted.

The Judge concluded that Easton had not discharged its burden with respect to obviousness.

Utility. Easton attacked the patent on the basis of statements of advantage in the disclosure section being untrue. Quoting Dr. Fox, Nike argued that where a patentee merely points to certain advantages that accrue from using the invention, it is not necessarily fatal if there is a failure to obtain the advantages. Based on Easton’s evidence, which did raise some doubt in the Judge’s mind, the Court held there was no utility issue here.

Fraud. Easton alleged that the background section of the patent contained some exaggerations and untrue statements. The Judge disagreed, but held that even if there were untrue statements, then there was no intention by the patentee to mislead as required by Wellcome.

Easton’s appeal and Nike’s cross-appeal is likely to be heard by the appeals court within 6 months. Assuming Nike wins on appeal and the matter is not settled, the case will then proceed to a second trial on the scope of remedies.

The case is Bauer Hockey Corp. v. Easton Sports Canada Inc., 2010 FC 361

Litigator Service class action

A lawsuit has been commenced on behalf of lawyers and law firms for the unauthorized reproduction of legal documents in the Litigator Service, reports the IP Osgoode blog.

According to the plaintiff’s lawyers:

“The lawsuit alleges that Thomson Reuters maintains a web-site which contains reproductions of filed court documents, and permits its subscribers to access these written materials without the consent of the lawyers who authored the court documents. The claim pleads that the lawyers are the owners of copyright in these legal materials, and that Thomson Reuters has infringed the Copyright Act by its actions. The allegations in the statement of claim have not been proven in Court. No statement of defence has yet been filed by Thomson Reuters.”

Consultation - dot-ca cybersquatting policy

CIRA has engaged the Strategic Council to undertake a  consultation of the CDRP, a tool used by brand owners to recover dot-ca domain names from cybersquatters. The consultation opens on June 9, 2010 and runs to September 17, 2010.

Free advanced examination for green patent apps

The Commissioner is planning to eliminate a $500 fee charged to applicants of “green” inventions to have their applications examined ahead of schedule, according to an item and consultation proposal posted on the CIPO web page.

The proposal notes that:

“No additional fee would be required for advancing the examination of patent applications related to green technologies. In order to be granted access to the expedited examination service for green technologies, a patent applicant would submit a declaration stating that their application relates to technology which could help to resolve or mitigate environmental impacts or conserve the natural environment and resources if commercialized.”

The proposal to offer free advanced examination for green patent apps matches the efforts of a pilot project of the United States Patent and Trademark Office announced in December 2009.

Federal Court Notice — Costs

Litigants should be prepared to address the issue of costs of interlocutory steps at the time of hearing, and not after, according to a new Notice from the Federal Court of Canada.

Following the Notice, parties and their lawyers should consult on the disposition and quantum of costs before going into a hearing. If there’s no agreement, then they should be prepared to make submissions (e.g. hand up a costs outline) at the hearing.

The Court is discouraging the former practice of waiting for a written decision, and then asking for costs to be taxed (assessed) by a Court official. Parties are more likely to be reasonable before knowing if they won a particular motion.

Another rationale, presumably, is to increase the efficiency of the Court, in keeping with the practice of other Courts, by forcing litigants to determine their own costs at an earlier stage.

US Trade Rep report - Canada on the IP Priority Watch List

Ambassador Ron Kirk, United States Trade Representative, and his office have today released their “Special 301” report. Once again, the report puts Canada on the watch list for having weak copyright and border enforcement policies.

According to the 301 report:

“Canada will remain on the Priority Watch List in 2010. The United States looks forward to the government of Canada’s implementation of its previous commitments, recently reaffirmed in 2010, to improve IPR protection, and is encouraged by the high level of cooperation between the Canadian and United States governments on IPR matters. However, Canada has not completed the legislative reforms in the copyright area that are necessary to deliver on its commitments. The United States urges Canada to enact legislation in the near term to update its copyright laws and address the challenge of Internet piracy. Canada should fully implement the WIPO Internet Treaties, which Canada signed in 1997. Canada’s weak enforcement of intellectual property rights is also of concern, and the United States continues to encourage Canada to improve its IPR enforcement system to provide for deterrent sentences and stronger enforcement powers. In particular, border enforcement continues to be weak. The United States encourages Canada to provide its border officials with the authority to seize suspected infringing materials without the need for a court order. The United States will continue to follow Canada’s progress toward implementing an adequate and effective IPR protection and enforcement regime, including its progress on actions to address Internet piracy and improve border enforcement.”

The “Special 301” Report is an annual review of the global state of intellectual property rights (IPR) protection and enforcement, conducted by the Office of the United States Trade Representative

Mabelslabels.ca transferred

Mabel’s labels, maker of custom clothing and household labels, secured the mabelslabels.ca domain name.

In a decision released today, the sole panellist found that the registrant, a family member of a competitor, registered the domain name in bad faith and ordered a transfer of the domain name.