MIPS AB Plaintiff v. BAUER HOCKEY LTD. and BAUER HOCKEY, LLC, 2018 FC 485

Date: 20180507 Docket: T-56-15 Citation: 2018 FC 485 Ottawa, Ontario, May 7, 2018 PRESENT: The Honourable Madam Justice Gagné BETWEEN: MIPS AB Plaintiff and BAUER HOCKEY LTD. and BAUER HOCKEY, LLC Defendants JUDGMENT AND REASONS I. Overview 2 II. Issues 5 III. Analysis 6 A. Inventors and ownership of the Bauer Patents 6

(1) MIPS’ inventive contribution to the Bauer Patents 6 (

a) MIPS’ background 6 (

b) Bauer’s background 9 (

c) First meeting held on November 16, 2010 and subsequent events 19 (

d) Second meeting held on March 30, 2011 and subsequent events 25 (

e) Third meeting held on July 11-12, 2011 and subsequent events 29 (

f) The law as it applies to these facts 31

(2) Agreements entered into between the parties 34 B. Expert evidence tendered at trial 36 C. Person skilled in the art 39 D. Common general knowledge 40 E. Claim construction – legal principle 42 F. MIPS 542 Patent 45

(1) Construction of the MIPS 542 Patent 45 (

a) Claim 1 of the MIPS 542 Patent 46 (

b) Claim 3 – ‘wherein the attachment device is fixated to the energy absorbing layer or the outer shell by means of at least one fixation member’ 56 (

c) Claim 4 – ‘wherein the fixation member is able to absorb energy and forces by deforming in an elastic, semi-elastic, or plastic way’ 57 (

d) Claim 5 – ‘the fixation member comprises at least one suspension member’ 58 (

e) Claim 6 – ‘wherein the sliding facilitator is a low friction material’ 58

(2) Infringement of the MIPS 542 Patent 59 (

a) Infringement – legal principles 59 (

b) Bauer’s RE-AKT and RE-AKT 100 helmets 60

(3) Validity of the MIPS 542 Patent 71

(

a) Anticipation 72 (

b) Obviousness 75 (

c) Claims broader than invention made 81 G. Bauer Patents 84

(1) Construction of the Bauer Patents 85 (

a) Claim 1 of the Bauer 316 Patent 85 (

b) Claim 9 of the Bauer 316 Patent 90 (

c) Claim 11 of the Bauer 316 Patent 91 (

d) Claim 14 of the Bauer 316 Patent 91 (

e) Claim 16 of the Bauer 316 Patent 92

(2) Validity of the Bauer Patents 92 (

a) Obviousness 92 (

b) Double patenting 95 IV. Conclusion 99 I. Overview [ 1 ] MIPS AB was a rather small Swedish company at the time that it filed its application for what would become Canadian Patent No. 2,798,542 [ MIPS 542 Patent ], entitled " “Helmet with sliding facilitator arranged at energy absorbing layer.” " The technology of the MIPS 542 Patent is used for absorbing rotational energy in all kinds of sports helmets [also known as the MIPS II technology].

MIPS is now a publicly traded company and a global leader in innovative sports helmet technology. [ 2 ] At the end of 2016, MIPS had license agreements with 45 different partners, representing 212 different helmet models and a yearly 1.7 million units sold. [ 3 ] In February 2017, Bauer Hockey Ltd. and Bauer Hockey, LLC [collectively, " “ Bauer ” " ], acquired all of the original defendants’ assets through a sale authorized by the Ontario Superior Court of Justice, made pursuant to the Companies’ Creditors Arrangement Act , RSC 1985, c C-36.

Bauer is one of the largest manufacturers and distributors of hockey equipment and related products worldwide.

Bauer applied for and obtained Canadian Patent No. 2,784,316 [ Bauer 316 Patent ] and, subsequently, Divisional Patents Nos. 2,821,540 [ Bauer 540 Patent ], 2,838,103 [ Bauer 103 Patent ] and 2,847,669 [ Bauer 669 Patent ], all of which are entitled " “Sports helmet with rotational impact protection” " [collectively the " “ Bauer Patents ” " ]. [ 4 ] MIPS is hereby seeking a declaration that Bauer, and more specifically its RE-AKT and RE-AKT 100 hockey helmets, infringe the MIPS 542 Patent, along with a permanent injunction to restrain Bauer from manufacturing, distributing, offering for sale, licensing or otherwise making available helmets within the scope of any claim of the MIPS 542 Patent. [ 5 ] MIPS is further asking that the Bauer Patents be declared invalid and impeached, mainly for obviousness and double patenting. [ 6 ] In the alternative, MIPS is seeking a declaration that its employees are the true inventors or co-inventors of the subject-matter claimed in the Bauer Patents, along with either

i) an order striking the current owners and inventors of the Bauer Patents, replacing them with MIPS and its employees; or ii) adding its employees as co-inventors and replacing Bauer with MIPS as the sole owner of the Bauer Patents. [ 7 ] Bauer, on the other hand, denies having stolen MIPS’ technology and insists on the fact that the SUSPEND-TECH floating liner in both its RE-AKT and RE-AKT 100 helmets was developed entirely by its employees.

It denies infringing any of the claims of the MIPS 542 Patent and adds that, in any event, the MIPS 542 Patent is invalid for anticipation and obviousness, and its claims are broader than the invention made. [ 8 ] I propose to reverse the order of MIPS’ claims for relief and start with its allegation that Bauer stole its technology. This will require reviewing the facts of the case and, more specifically, the business relationship between the parties at one point in time.

We will look into the different development stages of the RE-AKT and RE-AKT 100 helmets in an attempt to distinguish what really occurred from what may be simply coincidence and/or misperception.

Part of the evidence adduced before the Court is contradicted but in discussing that evidence below, I will expose the factual framework as I understand it to have occurred, based on the entirety of the evidence presented. [ 9 ] However, even if the Court finds that Bauer developed its own product without any assistance from MIPS, the question as to whether it infringes the MIPS 542 Patent remains since, if valid, the latter has priority over the launch of the RE-AKT and RE-AKT 100 helmets and over the Bauer Patents.

II. Issues [ 10 ] This case raises three main issues, along with the following sub-issues: A. Who are the inventors and owners of the Bauer Patents? 1) What inventive contribution, if any, did MIPS have to the Bauer Patents? 2) What rights flow from the agreements entered into between the parties? B.

Is Bauer selling helmets that are within the subject-matter of a valid patent owned by MIPS (the MIPS 542 Patent)? 1) What is the subject-matter of the claims of the MIPS 542 Patent? (Claim construction) 2) Do the Bauer RE-AKT and/or RE-AKT 100 helmets fall within the subject-matter of the MIPS 542 Patent? (Infringement of the MIPS 542 Patent) 3) Is the subject-matter of the MIPS 542 Patent new and non-obvious and do the claims have an appropriate " “breadth” " ? (Validity of the MIPS 542 Patent) C.

Is Bauer entitled to its own patent rights on rotational impact protection, given the prior invention and disclosures made by MIPS? 1) What is the subject-matter of the claims of the Bauer Patents? (Claim construction of the Bauer 316 Patent) 2) Is the subject-matter of the Bauer Patents non-obvious given the MIPS products on the market? (Validity of the Bauer Patents) 3) Are the Bauer 540, 103 and 669 Patents [ Bauer Divisional Patents ] " “patentably distinct” " from the subject-matter of the Bauer 316 Patent? (Double patenting) III. Analysis A.

Inventors and ownership of the Bauer Patents [ 11 ] MIPS seeks a declaration that should this Court find that any one or more of the claims of the Bauer Patents are valid, it possesses at least a partial ownership interest, if not the entire interest, in the respective patent(

s) by way of

i) title passing from the inventive contribution of MIPS’ employees; and/or ii) agreements entered into between the parties.

(1) MIPS’ inventive contribution to the Bauer Patents (

a) MIPS’ background [ 12 ] Dr. Peter Halldin is one of MIPS’ shareholders and founders. He was its Chief Executive Officer from 2001 to 2009 and is now its Chief Technological Officer. He holds a PhD in biomechanical engineering from the KTH Royal Institute of Technology in Stockholm, Sweden. His PhD director was Professor Hans von Holst, a brain surgeon at Karolinska Hospital in Stockholm who, at the time, was interested in and working on head and neck injury prevention combining medical and technical competencies. [ 13 ] U.S.

Patent No. 6,658,671 [ MIPS I Patent ] (Joint Book of Documents ( JBD ) 1876 or exhibit tendered at trial ( TX ) 14, tab B), filed in December 1999, on which Dr. Halldin and Dr. von Holst are named inventors, came out of Dr. Halldin’s work at KTH. We will review the MIPS I Patent in more detail when looking at the prior art, but suffice it to say at this stage that it describes a protective helmet with an outer shell and an inner shell, with a sliding facilitator that makes possible displacement between the hard outer shell and the inner energy absorbing layer (or between two layers of energy absorbing material).

This sliding aims to reduce rotational energy (made of a combination of linear and angular acceleration), which had been known to cause concussions and other brain injuries for some time. [ 14 ] Dr. Halldin was a motorcyclist, so he concentrated his initial research on motorcycle helmets. Reports from the time indicated that a motorcycle accident was most likely to result in an impact striking the head at a 30 degree angle (if 90 degrees is a straight down impact).

Around 2000, he worked with a British professor to develop a test rig to test rotational impact protection, whereby a helmet installed on a head form was dropped onto a sliding plate accelerated by a pneumatic cylinder. Shortly thereafter, Dr. Sven Kleiven, a colleague from KTH, presented his PhD thesis on numerical modelling of the human head and brain. A head form using Dr. Kleiven’s modeling and the test rig developed in the U.K. were used to test the first MIPS I prototypes. [ 15 ] MIPS was founded as a private company in 2001.

The MIPS I Patent was granted in Sweden in September 2002 and in the United States in December 2003. [ 16 ] The EQ1 equestrian helmet (JBD-1205), the first helmet incorporating MIPS I technology, was launched in 2007 but discontinued in 2008 after MIPS encountered production quality problems in China. This helmet was manufactured by MIPS and branded as such. [ 17 ] In 2009, MIPS changed its business strategy to become an " “ingredient brand,” " providing its technology through licenses to helmet manufacturers.

Its first client was Back on Track who used the MIPS I technology in its EQ2 equestrian helmet (JBD-1204). That same year, the POC Receptor Backcountry helmet (JBD-2058, TX-30) using the MIPS I technology was launched for use in

snowboarding. [ 18 ] However, at the time, in-mold helmets were a new trend and a challenge that MIPS recognized that it would have to address with a new solution; the MIPS I technology could not be implemented in an in-mold helmet. [ 19 ] By October or November of 2009, after undertaking various tests, Dr. Halldin and the MIPS R&D team discovered what would become the MIPS II technology.

They discovered that it was possible to insert a head attachment device into an in-mold helmet in order to obtain sliding inside the helmet rather than within the inner liner of the helmet or, in other words, to obtain relative motion between the wearer’s head and the helmet rather than between the outer shell and the energy absorbing layer. [ 20 ] In early 2010, MIPS tested its MIPS II prototype inside Biltex bicycle helmets.

The main focus of this testing was to assess whether the new MIPS II technology could reduce rotational energy through relative motion. [ 21 ] The Swedish patent application for MIPS II was filed on May 7, 2010 and an American patent application was filed on May 12, 2010. From August to November of that year, MIPS issued promotional material and attended several bicycle trade shows to present its MIPS II technology.

It presented a Limar bike helmet (JBD-243) with an early MIPS II prototype and a Lazer P-Nut bike helmet (JBD- 1073) equipped with the yellow MIPS attachment device, along with a promotional video of a child wearing a MIPS-equipped Lazer P- Nut helmet (JBD-167). MIPS’ promotion of its new technology continued throughout 2011. However, the MIPS II technology was not available on the market before February 2012. (

b) Bauer’s background [ 22 ] During the relevant time period, the Bauer helmet development team was composed of Jean-François Laperrière (Director of Protective Equipment Development, mechanical engineer), Marie-Claude Généreux (Senior Product Development Engineer), Jacques Durocher (Senior Industrial Designer) and Denis Côté (Industrial Design Technician, hockey helmet developer). [ 23 ] The development of hockey helmets at Bauer starts more than two years before launch and it follows a precise development cycle with the following eleven steps and deadlines: 1. Advanced research: Ongoing basis 2.

Preparation of the product brief: January-June (Year 1) 3. Design of the helmet: March-September (Year 1) 4. Engineering of the helmet: September (Year 1)-May (Year 2) 5. Tooling and production of prototypes: December (Year 1)- January (Year 2) 6. Testing: February-May (Year 2) 7. Design freeze and certification: May-June (Year 2) 8. Development of the other sizes: June-November (Year 2) 9 Presentation of the new helmet to key clients: September-October (Year 2) 10. Start of production: November (Year 2) 11.

Helmet hits retail: April-May (Year 3) [ 24 ] From a design and marketing perspective, the three most important criteria in the development of a new hockey helmet are fit, comfort and weight. [ 25 ] However, for the R&D team, protection is the most crucial criteria. Starting in 2006-2007, Mr. Laperrière and Ms.

Généreux began to attend conferences and certification meetings where, more and more, the subject of interest revolved around concussions suffered by hockey players and the management of rotational energy in order to prevent concussions. [ 26 ] At the June 2007 Bauer Product Camp, a PowerPoint (JBD-1404) was shown that included a concussion study from Dr. Patrick J. Bishop, chair of the Canadian Standards Association (CSA) committee that sets standards for hockey helmets and face protectors, and a study from Dr.

Blaine Hoshizaki of the University of Ottawa on the use of different materials to manage impact forces at different energy levels. [ 27 ] In May 2008, Ms. Généreux attended the 5 th International Symposium on Safety in Ice Hockey. At the conference, Philippe Rousseau, a student of Dr. Hoshizaki’s, presented a new way of testing helmets that introduced an angular acceleration component. The previous testing methods only took into account linear components. [ 28 ] In December of the same year, an

article entitled " “A Comparison of Peak Linear and Angular Head Form Accelerations Using Ice Hockey Helmets” " was published by Dr. Hoshizaki and his students. According to Mr. Laperrière, this

article was where Bauer first learned that using a softer liner like Vinyl Nitrate [ VN ] or PORON, instead of a harder one like Expanded Polypropylene [ EPP ], would better protect against the effects of rotational impact. [ 29 ] Mindful of the eleven development steps discussed above, it is during the summer of 2009 that Mr. Durocher began working on the design of the Next Generation helmet [ NG helmet ] that would eventually be known as the RE-AKT (JBD-1931, 1252), which was

expected to be launched during the Back to Hockey 2012 [ BTH12 ] season. As a designer, his focus was on fit, comfort and weight. In addition, he was asked by the marketing department to focus on the positioning of the helmet on the head, which was directed not to exceed the height of one finger above the eyebrows in order to be attractive to professional hockey players. That quality is important, since if a helmet is worn by professional hockey players, it will sell. [ 30 ] In June 2009, a PowerPoint was presented at the Bauer Product Camp (JBD-2000).

It mostly dealt with the helmet to be released during BTH11 – a model known as the HH9900 – but also included the early development stages of the NG/RE-AKT helmet. The PowerPoint summarized various technologies and materials being considered for upcoming helmets, including PORON XRD foam. Mr. Durocher stated that their takeaway from this PowerPoint was that:

i) PORON XRD foam performs best at low velocity and low energy; ii) it may be a good idea to combine PORON XRD foam with another kind of foam to reduce its weight; and iii) PORON XRD foam is very spongy, so it could potentially replace the Polyvinyl Chloride [ PVC ] comfort foam. The overall suggestion was that PORON XRD foam is the best option for optimizing both profits and performance impact at different energy levels. [ 31 ] Ms.

Généreux stated that at the end of 2009, beginning of 2010, the general perspective on the effect of rotational impacts on concussions was that it was a new area that needed to be explored, with new methods of testing to be developed. The move from linear component testing to angular/rotational component testing was just beginning and there was, as of yet, no consensus on the best way to perform tests to capture this element. [ 32 ] It was only at the beginning of 2010 that the official design of the RE-AKT helmet began, starting with the input of the engineering team.

On January 12, a PowerPoint entitled " “Helmet product camp II – BTH12” " (JBD-1438) was presented at Product Camp. It referenced a joint project between Bauer and McGill University to determine a new way of measuring impact forces sustained by hockey players. It also discussed the use of PORON XRD foam on the inside of a hockey helmet. It summarized the four different forms of PORON XRD considered by Bauer: foam sheets, a flat poured foam, 3D XRD moulded foam and XRD poured foam.

Finally, the presentation summarized the advantages and disadvantages of the new EXPANCEL liner concept. [ 33 ] Generally speaking, the RE-AKT helmet included the following new features: The head shape was reworked to improve fit and comfort; A new longitudinal blockage system, down the centre of the helmet, was introduced; The occipital lock, version 3, was developed.

There was now just one central button to adjust the occipital lock and padding; A new ear protection feature was added; The SUSPEND-TECH floating liner was introduced and made of PORON XRD foam; For the energy absorbing layer, EPP was abandoned in favour of EXPANCEL foam since it is a lighter material that responds better to impacts; The look of the helmet fit very close to and very low on the head; A new mechanism was added to better adjust the helmet to the wearer’s head. [ 34 ] What is important for us is that the first version of the SUSPEND-TECH floating liner presented in a March 2010 PowerPoint (JBD-1450, slide 27) included 12 mm cylinders or protrusions that were extended to be in contact with the outer shell through corresponding holes or recesses in the EXPANCEL liner: [ 35 ] Mr.

Durocher explained that the SUSPEND-TECH floating liner had, in his mind, two main advantages. First, the fact that the comfort liner was floating instead of glued to the energy absorbing layer solved a problem that Bauer had been trying to solve for several years, where the liner became unglued from the energy absorbing layer and became stuck to the wearer’s head.

Second, using PORON XRD as the material for the floating liner served a dual purpose: to absorb high and low energy and to act as a comfort liner. [ 36 ] It is important to note that PORON XRD is an exclusive patented material manufactured by Rogers Corporation and its sub- contractors, and that it mostly comes in yellow. [ 37 ] At the June 2010 Product Camp, the RE-AKT development team first advanced the idea that Mr. Durocher’s floating liner concept could also help to manage rotational forces. This hypothesis was influenced by various reports and studies coming out of Dr.

Hoshizaki’s lab, which indicated that soft liners (like VN foam) provide better rotational impact protection than hard liners (like EPP). Mr. Laperrière testified that they understood from Dr. Hoshizaki’s work that to successfully manage rotational forces, it was necessary to have a liner

that not only compressed but also deformed along every axis to be able to absorb linear and rotational forces. [ 38 ] The team also discussed a project that Bauer wanted to initiate with Dr. Hoshizaki’s lab. In fact, a document attached to a June-July 2010 email chain between Bauer (Mr. Laperrière) and the University of Ottawa (Dr. Hoshizaki) (JBD-1487) defines the scope of this project as being: Improve protection and safety of hockey players by developing a new helmet performance testing protocol.

This protocol will include the traditional linear acceleration performance criteria as well as angular acceleration, which angular acceleration we think should become part of the ice hockey helmet’s performance criteria. It will also include the use of finite element analysis of a brain model to evaluate and quantify the effect of impacts to the brain. [ 39 ] The team further concluded that they should tell the marketing department to revise its product brief to include the diversion of rotational forces as a feature of the RE-AKT helmet (see Ms.

Généreux’s notes, JBD-1323, TX-55). [ 40 ] The first prototype of the SUSPEND-TECH floating liner was manufactured in July 2010 by PolyWorks, Rogers’ sub-contractor (JBD-1476). The weight was as Bauer hoped but the cost of producing the liner was extremely high. [ 41 ] Shortly thereafter, Bauer put this prototype into a Bauer 7500 (JBD-1250).

The model was assembled by Feng Tay, Bauer’s manufacturer in Asia. [ 42 ] During the course of August 2010, the R&D team pushed to get the project with the University of Ottawa on track as they really wanted to be able to show off the helmet’s ability to manage rotational forces and needed a testing partner to be able to do so. Unfortunately, Bauer received confirmation that Dr. Hoshizaki’s lab had signed a similar testing agreement with their competitor, CCM. [ 43 ] This news increased the pressure on Mr.

Laperrière and his team to find another testing partner as soon as possible. [ 44 ] In early September 2010, the development team began thinking of other testing options and made a list of labs to contact (JBD- 1497). This list included MIPS, McGill University, Biokinetics, Simbex, a university in the U.K. and Dr. Bishop at the University of Waterloo. [ 45 ] On September 7, 2010, Ms. Généreux wrote an email to Professor David Pearsall at McGill University (JBD-1499).

She mentioned that Bauer was seeking a scientific partner to help them develop testing methods to show the effect of angular accelerations on hockey helmets during impact. She also mentioned that they had heard of MIPS, a Swedish company that developed a system to reduce angular acceleration during impact. She asked if he knew of their company, technology and testing methods. [ 46 ] Also during the month of September 2010, the R&D team discussed the need to revise the design of the floating liner in view of the prohibitive cost of the parts and the technical challenges encountered by Feng Tay.

The EXPANCEL liner with recesses was too fragile (see Ms. Généreux’s notes, JBD-1323, TX-60) and it was decided to move away from the floating liner with 12 mm protrusions and to simplify the design. Mr. Durocher came up with a new idea of an EXPANCEL liner with smaller recesses and a SUSPEND-TECH floating liner with small dimples to match the corresponding recesses. [ 47 ] Although Bauer understood the manufacturing problems in the fall of 2010, it was only in January 2011 that Mr.

Durocher finalized his 2D design drawings of the SUSPEND-TECH floating liner with small dimples (JBD-1784): [ 48 ] On September 21, 2010, Mr. Laperrière sent the following email to MIPS’ general address (JBD-193): Subject: MIPS in Bauer hockey helmet Hi, I’m in charge of the development of the new helmet at Bauer. Bauer manufacture hockey helmet and we would like to know

more about your MIPS protection system. Is-it possible to obtain some samples of the MIPS component kit, so we can evaluate the possibility of using this one in our helmet [sic]. Feel free to communicate with me via e-mail or you can call me at [phone number omitted]. Regards, jf [ 49 ] The content of this email had a significant impact on the parties’ perceptions of Bauer’s needs and intentions at the time. Considering the subject of this email and MIPS’ business strategy and mission, Mr.

Johan Thiel – now MIPS’ CEO, but responsible for sales and marketing at the time – understood Bauer to have been interested in implementing MIPS technology into Bauer helmets. However, and as the evidence shows, Bauer may have been interested, or at least curious, about the MIPS technology but, in the short term, it was far more interested in its testing methods and facilities. Mr. Laperrière testified that his choice of words ( " “MIPS in a Bauer hockey helmet” " ) was intended to trigger a quicker response from MIPS than if he had referred solely to MIPS’ testing capacity. Not only is Mr.

Laperrière’s testimony on that subject credible and uncontradicted, but it is also corroborated by the rest of the evidence and by the agreements later entered into by the parties. [ 50 ] As a result of the contact initiated by Bauer, a first meeting between Bauer and MIPS was scheduled for November 16, 2010 at the Bauer facility in Saint-Jérôme, Quebec. [ 51 ] In preparation for this meeting, Mr. Laperrière and Mr. Durocher reviewed MIPS’ website which, at the time, referred only to its MIPS I technology.

The patent application regarding the MIPS II technology had been filed in May 2010, but had not yet been granted and its claims were still confidential. [ 52 ] In a very subtle way, MIPS suggests that the sliding feature in the MIPS I technology may have influenced Bauer’s move from the 12 mm protrusions to the small dimples in its SUSPEND-TECH floating liner, so as to cause relative movement. However, and as will be further discussed below, this is a somewhat dangerous route for MIPS to take as it could give ammunition to Bauer’s argument that the MIPS 542 Patent is invalid for obviousness.

Furthermore, and as discussed above, the evidence shows that the reasons for the change are instead related to the manufacturing costs and technical challenges encountered in prototype development. (

c) First meeting held on November 16, 2010 and subsequent events [ 53 ] At this meeting, Mr. Laperrière, Ms. Généreux and Mr. Durocher were present for Bauer and Mr. Thiel was present for MIPS. [ 54 ] Mr. Thiel presented MIPS and its technology via a PowerPoint presentation (JBD-172). During his testimony in chief, he highlighted slide 18 – " “MIPS Inmold” " – which showed the MIPS II technology and the relative motion created between the attachment device and the energy absorbing layer. This slide was added to an existing MIPS I focused PowerPoint presentation in August 2010. Mr.

Thiel admitted in cross-examination that the MIPS II technology was not commercially available at that time and that he was not yet sure which of either the MIPS I or MIPS II technologies could be implemented into a two-shell hockey helmet. [ 55 ] It is to be noted that Mr. Thiel had both presentations on his laptop, the one with slide 18 and the one without, and that none of Bauer’s representatives recall specifically having seen slide 18, which can be seen below: [ 56 ] Mr. Thiel also brought with him a large bag of sample helmets.

He had a POC Receptor Backcountry helmet with the MIPS I technology (JBD-2058) and a Lazer P-Nut incorporating the MIPS II technology (JBD-1073). Mr. Thiel testified that he only showed the Lazer P-Nut very briefly, as the helmet belonged to Lazer and was merely a prototype; no commercialization agreement had yet been signed between Lazer and MIPS. He admitted that the only products commercially available at the time used the MIPS I technology. [ 57 ] On the Bauer side, Mr. Laperrière and Ms. Généreux took notes during the meeting (JBD-20, 2124, respectively). [ 58 ] Mr.

Laperrière’s notes include " “Cost – 10-15 U.S.” " which refers to an estimate of $10K-$15K for MIPS to do the initial testing, a

sum amenable to Bauer. [ 59 ] Mr. Laperrière recalled having informed Mr. Thiel at the outset of the meeting about Bauer’s strict policy regarding confidentiality and non-disclosure. He told Mr. Thiel that since they had not signed a Non-Disclosure Agreement [NDA], he could not discuss any Bauer product that was not yet on the market. He asked Mr. Thiel to do the same with regard to MIPS products. He also recalled agreeing to a two-stage project – Phase 1 involving tests and Phase 2 involving the insertion of MIPS’ technology into a Bauer helmet. Mr.

Laperrière testified that they discussed Phase 2 as a result of Bauer initiating talks with MIPS under the premise of collaboration. However, he added that they were doubtful that the MIPS I technology available at the time could be implemented into a two-shell adjustable hockey helmet. Mr. Thiel told them that MIPS had not done testing for other parties in the past, but seemed very open and receptive to the possibility of doing so for Bauer. [ 60 ] Ms. Généreux’s notes only refer to two MIPS patents: the MIPS I Patent and a U.S. patent for a " “rubber suspension system” " not at stake in this file.

She admitted that she was informed that the MIPS I technology involved rotational motion of the outer shell and that motion was tied to the idea of a reduction of rotational energy transmitted to the brain. [ 61 ] We can also read in her notes: " “Could work as a consultant for testing our own helmets” " and " “adding MIPS in a helmet.” " Her takeaway from this meeting was that it was possible to use MIPS’ services for testing Bauer helmets.

As far as implementing MIPS’ technology into Bauer helmets, she saw that as a potentially much more long-term option, given MIPS’ unfamiliarity with hockey helmets. [ 62 ] Mr. Durocher confirmed that Mr. Thiel presented MIPS, its background, the capacity of its laboratory, the research that led it to test rotational forces, the helmet technologies that it developed and its products. He understood that, at that time, the technology presented by Mr. Thiel could not be adapted into a two-shell adjustable hockey helmet. However, Mr.

Thiel said he was happy to try and find a solution, so he asked for and was provided with a Bauer 7500 helmet to take back to Sweden with him. [ 63 ] Mr. Durocher and Ms. Généreux do not recall having seen a helmet at this meeting; Mr. Laperrière only remembers having seen a MIPS I snowboard helmet. [ 64 ] In early January 2011, Bauer followed up with MIPS: " “Have you been able to modify the helmet that I gave you during our last meeting, we would like to develop a testing protocol for a hockey helmet and we would like to see if your MIPS system could be implement [sic] in our helmet.

Could you tell us if your firm is still interested to work with us and give us a preliminary time line and cost to do this project?” " (Mr. Laperrière’s email, JBD-297). [ 65 ] Meanwhile at MIPS, the development of the Burton RED HiFi had begun and was intended to be ready for the Snowsports Industries America [SIA] Tradeshow in Denver scheduled from January 27 to January 31, 2011.

This helmet implemented the MIPS II technology and included a yellow attachment device with comfort lining and two fixation members (JBD-2086): [ 66 ] This Burton RED HiFi was also shown in February 2011 at the ISPO Tradeshow in Munich. " [ " " 67 " " ] " At Bauer, the team continued developing the RE-AKT helmet. At a Product Camp held in January 2011, a PowerPoint was presented (JBD-1990). It referred to the MIPS technology, to its scientific research and to its patented system managing rotational forces with a low-friction layer system.

The launch date to have this technology implemented in Bauer helmets was identified as BTH14. A further slide referred to a multi-phase relationship between MIPS and Bauer, including the negotiation of a partnership agreement and testing Bauer helmets. One of the bullet points on this slide states: " “Look at the possibility to use MIPS patented system.” " [ 68 ] As indicated above, it is also in January 2011 that Mr. Durocher prepared his 2D design drawings of the SUSPEND-TECH floating liner with small dimples instead of the 12 mm protrusions (JBD-1791).

An EXPANCEL liner without recesses was also drawn up, since the plan became to make matching recesses for the small dimples by hand.

[ 69 ] Mr. Durocher explained that the sizing of this latest prototype was a little off from past Bauer helmets and that it sat too high up on the head. He needed to work on redesigning the prototype. Two different prototypes were internally fit tested: one had recesses in the EXPANCEL liner, while the other one did not (JBD-2003). Feedback was solicited from the marketing department. [ 70 ] Ms. Généreux prepared drawings of the EXPANCEL liner with small recesses in March 2011 (JBD-2044).

These recesses were intended to make room for the matching dimples on the SUSPEND-TECH liner, in an effort to improve the helmet’s fit. [ 71 ] During that period, meeting minutes (see for example JBD-1526, 1527) show that Mr. Durocher still needed to work on the design to improve the size and fit of the RE-AKT helmet. [ 72 ] Effective March 17, 2011, the parties executed a NDA in advance of their next meeting (JBD-324). The content of this NDA will be discussed later. (

d) Second meeting held on March 30, 2011 and subsequent events [ 73 ] At this Saint-Jérôme meeting, Mr. Laperrière, Ms. Généreux and Mr. Ken Covo (Vice-President, Research and Development) were present for Bauer and Mr. Thiel was present for MIPS. Both Ms. Généreux and Mr. Covo took notes during the meeting (JBD-1565, 1969, respectively). [ 74 ] The parties agreed to a project quotation that day, though it was only executed on May 11, 2011 (JBD-538, 1591). The project scope was divided into three phases: Project scope In this scope the project is divided in three phase (sic).

MIPS will carry the projects on helmets provided by Bauer for the explicit purpose defined below. Short term Phase 1 : with the purpose to carry out a pre-study of three Bauer helmets and one with MIPS. Phase 2 : to refine the test protocol more towards Hockey and continue with test of Bauer helmet without and with MIPS plus compare with competitor’s helmets. FE-modling [ sic ] will be carried out and more in-depth report/conclusions will be delivered. Long term Phase 3 : A two year plan to develop test protocol and helmet together with Bauer. This phase will be carried out in a step by step approach.

By a defined brief sub-projects will be set up and quoted separately. [ 75 ] Phase 1 testing was to be performed on an assembled Bauer RE-AKT helmet, as well as HH5100 and HH7500 helmets. Bauer was also to provide MIPS with a disassembled HH7500 to be provisionally implemented with MIPS technology and tested. This phase was to be performed from May 1 st to July 15, 2011. [ 76 ] Phase 2 testing was to be performed on an assembled RE-AKT helmet and on competitors’ helmets for the sake of comparison. This phase included a disassembled RE-AKT helmet being provisionally implemented with MIPS technology and tested.

The timeframe for this second phase was July 15 to October 1 st , 2011. [ 77 ] Bauer witnesses recalled discussing mainly testing protocol during that second meeting. However, their notes confirm Mr. Thiel’s testimony that the MIPS II technology was summarily discussed. In Ms. Généreux’s notes, we can read: " “MIPS II: 0.7 mm to 0.8 mm thick – with elastic mvmt 10 mm – seems enough to reduce rotational force by 50%.” " In Mr.

Covo’s notes, we find the following: " “7-8 mm low friction layer 10-15 mm show displacement – MIPS II multi-impact vs (crash helmet) single impact – rubber fixations.” " We know that, at that time, MIPS had only worked on single impact helmets, such as motorcycle, ski and bicycle helmets. [ 78 ] On the other hand, Ms.

Généreux’s notes indicate: " “See Red Burton Helmet” " , which suggests that the Burton helmet was not shown and that she made a note to herself to look at it in the future, since it integrated the MIPS II technology summarily discussed during the meeting. [ 79 ] On April 8, 2011, and as a result of fitting issues and technical challenges with the RE-AKT prototype, Bauer requested and received samples of the SUSPEND-TECH floating liner without dimples from Feng Tay for testing purposes. [ 80 ] MIPS’ theory of contribution to or ownership of the SUSPEND-TECH floating liner inventive concept is dependent on the fact that the dimples were removed at MIPS’ suggestion.

Its original position was expressed in its Thrice Amended Statement of Claim (at paras 21, 23) and reads as follows: ….Additionally, beyond the scope of the originally planned testing, on June 22, 2011, an employee of MIPS named Daniel Lanner determined that the RE-AKT helmet needed to be modified to enable a relative movement between the outer surface of the attachment device and the other portions of the helmet. This modification as determined by MIPS effectively eliminated Bauer’s change to the MIPS system by removing the bumps that Bauer had included in the outer surface of the RE-AKT's attachment device .

This system with the bumps removed was later tested and included in the test results. … On July 10-11, 2011, Mr. Laperriere and Ms. Généreux visited the MIPS facility in Stockholm, Sweden. During the two-day

meeting, MIPS explained the testing and fully demonstrated the HH7500 helmet as modified by MIPS to include the MIPS rotational impact protection system. MIPS also recommended to Bauer that the bumps included by Bauer on the RE-AKT attachment device be removed. [My emphasis.] [ 81 ] However, Bauer’s decision to remove the dimples was taken on June 1 st , 2011 (JBD-1605), Ms. Généreux’s computer-aided design [CAD] drawings of the EXPANCEL liner were revised accordingly on June 10, 2011 (JBD-1809, 1811, 1813) and Mr.

Durocher revised his CAD drawings for the floating liner on June 13, 2011 (JBD-1621). [ 82 ] Meanwhile, on June 3, 2011, Mr. Durocher finalized his Invention Disclosure Form (JBD-1609), which was revised on June 7, 2011 (JBD-1613, 1614). The principle set out in that document was a system allowing the head to move within the helmet during an angular impact, thus limiting the movement of the brain inside the skull. The initial form did not disclose dimples but the revised version did. Mr. Durocher explained that he wanted the disclosure to be as broad as possible, since contrary to Mr. Laperrière and Ms.

Généreux, he still thought that the dimples could improve protection against low energy impacts without compromising too much on fit. [ 83 ] In light of the foregoing evidence, MIPS changed its approach at trial (departing from the position that MIPS only determined on June 22 that dimples had to be removed). Mr. Thiel testified that during a telephone conversation he had with Mr. Laperrière on June 10, 2011, he recommended that the dimples be removed from the SUSPEND-TECH floating liner. Mr. Laperrière and Ms.

Généreux do not recall receiving any recommendation from MIPS on removing the dimples before the July 2011 meeting in Stockholm. [ 84 ] The Court prefers Bauer’s evidence on this point, not only because it is consistent with MIPS’ original pleadings, but also because it is consistent with MIPS’ impression when it first received RE-AKT helmet samples with the dimples and matching recesses on June 2, 2011. At that time, MIPS’ management team wondered whether that version of the SUSPEND-TECH floating liner infringed the MIPS 542 Patent.

If the feeling was that the SUSPEND-TECH floating liner with dimples might infringe, why suggest eliminating " “Bauer’s change to the MIPS system….” " as seen in paragraph 21 of MIPS’ Thrice Amended Statement of Claim? It is more likely that MIPS’ suggestion would not have been made before the parties’ first discussion of possible infringement during the July 2011 Stockholm meeting. [ 85 ] On July 7, 2011, MIPS received new samples of the RE-AKT helmet without dimples and matching recesses for testing. However, the evidence shows that the box was not opened before the July Stockholm meeting. (

e) Third meeting held on July 11-12, 2011 and subsequent events [ 86 ] Mr. Laperrière and Ms. Généreux attended the third meeting in Stockholm on Bauer’s behalf. The first day, they met with Mr. Thiel at the MIPS lab on the KTH campus. They saw the test rig and brain model and they agreed on modifications to the testing protocol for Phase 2, to better replicate the real life conditions under which hockey helmets undergo impacts. [ 87 ] The second day, they visited Niklas Steenberg, then CEO of MIPS, Mr. Thiel and Mr. Daniel Lanner, Product Manager, at MIPS’ office in central Stockholm.

MIPS presented the test results from Phase 1 and discussed Phase 2 testing. During the lunch – where he chose chicken over beet salad with goat cheese and walnuts – Mr. Lanner told Bauer’s representatives that he cut off the dimples from the RE-AKT samples in order to lower friction and improve test results, suggesting that Bauer implement this change going forward. According to Mr. Lanner, Mr. Laperrière was surprised as he thought that high friction would be better than low friction to absorb rotational energy. Mr.

Lanner admitted to being later informed that MIPS had in fact already received samples of the RE-AKT helmet without dimples. [ 88 ] During the same month, MIPS’ promotional video showing the Lazer P-Nut with MIPS II technology became available on YouTube (JBD-377). [ 89 ] On July 27, 2011, Bauer filed its U.S. provisional patent application, from which it claims its priority date for the Bauer Patents (JBD-1059, 1238). [ 90 ] All of the parties’ discussions from that point forward, regarding mainly Phase 3 of their project, included the core issue of infringement.

MIPS wanted Bauer to acknowledge that the RE-AKT helmet, and eventually the RE-AKT 100 helmet, incorporated the MIPS II technology, and Bauer insisted upon the fact that the RE-AKT helmets were the result of its own rotational impact management technology. Consequently, their relationship ended in January 2012 without the parties ever reaching an agreement on the scope of Phase 3 of their project. [ 91 ] From the above, I note a few events or coincidences that contributed to MIPS’ misperception of the facts in this case. For example: The fact that Mr.

Laperrière’s first email referred to Bauer’s interest in MIPS’ technology rather than its testing abilities tainted MIPS’ perception of its relationship with Bauer. However, it became clear after the first meeting that Bauer’s short term interest was in MIPS’ testing services. That could at least partly explain why Mr. Laperrière had to repeatedly follow up with MIPS in order to finally

schedule the second meeting and why MIPS’ interest seemed to have dropped. In any event, the scope of the short term mandate given to MIPS is clearly limited in the signed quotation to testing Bauer’s existing and RE-AKT helmets; Upon receipt of the first samples of the RE-AKT helmet – with the dimples – MIPS’s management internally raised the issue of infringement. The fact that the SUSPEND-TECH floating liner, just like MIPS’ attachment device, is mainly yellow seems to have contributed to that reaction.

But as indicated above, PORON XRD is a patented material and it does come in yellow; MIPS’ testing team only opened the box containing the second samples of the RE-AKT helmet after the July Stockholm meeting during which removing the dimples was discussed. However, the uncontradicted evidence shows that the box was received by MIPS before the meeting.

(

f) The law as it applies to these facts [ 92 ] An inventor is generally presumed to be the owner of an invention, unless he or she was employed for the express purpose of inventing. [ 93 ] In Apotex Inc v Wellcome Foundation Ltd , 2002 SCC 77 (at paras 96-97 , 100, 102), the Supreme Court of Canada (per Justice Binnie) defined inventorship as follows: [96] Inventorship is not defined in the Act, and it must therefore be inferred from various sections.

From the definition of “invention” in s. 2, for example, we infer that the inventor is the person or persons who conceived of the “new and useful” art, process, machine, manufacture or composition of matter, or any “new and useful” improvement thereto. The ultimate question must therefore be: who is responsible for the inventive concept? [97] … It is therefore not enough to have a good idea (or, as was said in Christiani , supra , at p. 454, “for a man to say that an idea floated through his brain”); the ingenious idea must be “reduced ... to a definite and practical shape” ( ibid .).

Of course, in the steps leading from conception to patentability, the inventor(

s) may utilize the services of others, who may be highly skilled, but those others will not be co-inventors unless they participated in the conception as opposed to its verification. As Jenkins J. notes in May & Baker Ltd. v. Ciba Ltd. (1948), 65 R.P.C. 255 (Ch.

D.), at p. 281, the requisite “useful qualities” of an invention, “must be the inventor’s own discovery as opposed to mere verification by him of previous predictions”. … [100] … If Glaxo/Wellcome had soundly predicted that AZT could cure nausea in the weightlessness of space, it might require NASA and all its rocket ship expertise to “establish” the utility, but NASA would not on that account become a co- inventor. … [102] There is no question that the ATH8 cell line developed by Drs. Broder and Mitsuya at NIH was original and offered a testing environment that Glaxo/Wellcome could not duplicate in-house.

For this achievement they obtained a patent, as mentioned earlier. But the patentees of an invention for testing do not, by virtue of executing tests using that invention, become co-inventors of every sound idea that is so tested. [ 94 ] The facts of this case do not support MIPS’ assertion that its employees invented or even participated in the invention of the Bauer Patents.

They tested the RE-AKT helmet with and without the dimples and matching recesses but they are not at the origin of the inventive concept found therein, nor did they come up with the idea of removing the dimples to improve rotational impact management. As a consequence of this finding, MIPS cannot be owner or partial owner of the Bauer Patents. [ 95 ] Before the November 16, 2010 meeting, the only MIPS technology publicly available was its MIPS I technology. The evidence is amply clear that the MIPS I technology was not Mr.

Durocher’s inspiration for his first version of the SUSPEND-TECH floating liner with 12 mm protrusions and matching recesses in the EXPANCEL liner. [ 96 ] Bauer also knew before the November 16, 2010 meeting that Mr. Durocher’s design could manage rotational impacts in addition to improving protection against linear impacts, both at high and low energies. That belief came from Dr.

Hoshizaki’s work demonstrating that softer liners perform better than harder liners at rotational impact protection. [ 97 ] Also, SUSPEND-TECH was a floating liner from the time it was first conceived and has always been able to move relative to the energy absorbing material, albeit at different degrees. [ 98 ] The evidence is also clear that Bauer changed its design from having 12 mm protrusions to small dimples as a consequence of manufacturing difficulties encountered with the EXPANCEL liner being too fragile to withstand multiple recesses. Ms.

Généreux testified – and in fact made the demonstration during trial – that EXPANCEL is a very friable material. During fabrication, the material is not yet covered with " “non-woven” " film and it broke when being unmolded. Bauer was thus informed by Feng Tay that it needed to modify and simplify its design. [ 99 ] Finally, the evidence shows that the dimples were eventually removed to solve fitting issues. Ms. Généreux had struggled with the recesses’ positioning.

It took a while for her to determine their exact positioning and to choose which recesses needed to be oblong in order for all the dimples to remain in their matching recesses when the helmet was adjusted. Bauer’s development team was working with SUSPEND-TECH prototypes with and without dimples before MIPS’ recommendation to remove them.

As I retain from the evidence that MIPS’ recommendation first came during the July 2011 Stockholm meeting, when MIPS initially raised the issue of infringement, it is clear that Bauer’s decision to get rid of the dimples was made prior to MIPS’ recommendation. [ 100 ] For these reasons, the Court finds that MIPS did not contribute to the inventive concept of the Bauer Patents.

(2) Agreements entered into between the parties [ 101 ] Another exception to the principle that an inventor is presumed to be the owner of an invention is when there is an express contract to the contrary. [ 102 ] First, from the quotation arrived at by the parties during the March 30, 2011 meeting, it is clear that the parties had yet to reach full agreement on the conditions pertaining to Phase 3 of the project. As the evidence shows, Bauer did not expect to have MIPS technology in its helmets before BTH14.

And as indicated above, the parties never agreed on the terms and conditions of Phase 3, since they were unable to resolve the alleged infringement issue. So MIPS never developed a system for new Bauer helmets. It did some

testing on the HH7500 helmet that had been temporarily outfitted with a standard MIPS yellow attachment device. It also tested the RE- AKT helmet by gluing the SUSPEND-TECH floating liner to the EXPANCEL energy absorbing layer and adding a standard MIPS yellow attachment device and. But that was all part of Phases 1 and 2 testing, not Phase 3 development. [ 103 ] In addition,

article 7 of the NDA signed by the parties on March 17, 2011 (JBD-324) deals with their respective intellectual property: 7. Intellectual Property: Ownership of Inventions a. The Parties agree that imparting of Confidential Information under this Agreement by BAUER creates no ownership or license rights in MIPS and BAUER reserves all patent, trade secret and all other proprietary rights it might have. b. MIPS will continue to own all Technology and all Intellectual Property Rights (“IP Rights”) relating to the MIPS Technology. c.

MIPS shall continue to own all Technology and IP Rights in all improvements to the MIPS Technology and Components, regardless of by whom developed. d.

BAUER shall continue to own all Technology and IP rights in all improvements to the BAUER Technology for the BAUER Helmet Parts. [ 104 ] This provision indicates that, even if the idea of removing the dimples came from MIPS, which is not the Court’s conclusion, the IP rights in the Bauer Patents would still be vested in Bauer. [ 105 ] Finally, the parties reiterated their intentions with regard to IP in the Consulting Agreement they signed on September 1 st , 2011 (effective March 15, 2011) (JBD-643): 5. OWNERSHIP OF TECHNOLOGY, INTELLECTUAL PROPERTY, AND OUTCOME FROM PROJECTS; NO LICENSE 5.1 Test Reports .

Unless otherwise stated in the Project Order, the specific Project test reports to be issued by MIPS thereunder will become the property of the Bauer Group upon issuance, subject to the provisions of

Section 5.3 below [dealing with MIPS technology and improvement thereto]. 5.2 Bauer Parts and IP and Improvements Thereto .

The Bauer Group will continue to own all Bauer Group technology and Bauer Group intellectual property rights in all helmets parts owned and /or provided by the Bauer Group and in all improvements to such technology or helmet parts that do not include or involve any of the MIPS Technology. [ 106 ] As I am of the view that MIPS did not participate in the development of the RE-AKT helmet or in any of the Bauer Patents, any improvements to the Bauer technology – like removing the dimples – clearly belong to Bauer. B. Expert evidence tendered at trial [ 107 ] MIPS called two expert witnesses, Dr.

Rémy Willinger and Mr. Michael Lowe. [ 108 ] Dr. Willinger is a professor at the University of Strasbourg, in France, where he has led a research group specializing in head trauma biomechanics since 2000. He obtained his degree in civil engineering from the National School in Arts and Industries in Strasbourg in 1983. He further obtained his PhD on the muscular forces in a joint, and modelling of muscular constitutive laws, from the University of Strasbourg in 1988. [ 109 ] Dr.

Willinger has over twenty-five years’ experience working on the biomechanics of head and neck impacts and the development of protective systems for both head and neck. His work includes simulating real world head and neck trauma to establish head and neck injury criteria. His work also involves human body finite element modelling, which is the development of sophisticated computational modelling systems to assess the effects of impacts to the human head and neck. Dr.

Willinger’s research group has collaborated with car and helmet manufacturers and assisted in the development and testing of protective systems tailored to their specific impact environments. [ 110 ] At trial, Dr. Willinger was qualified as an engineer, a professor, an expert in head trauma biomechanics and helmet evaluation, with specific expertise in finite element modelling and physical testing of helmets. [ 111 ] Mr. Lowe has over twenty years’ experience in sports helmet development.

He is currently a product development consultant, advising on the development of helmets for hockey, football and power sports. Prior to this position, he worked for a number of helmet manufacturers in a variety of senior roles. He obtained a Bachelor of Science in Industrial Design from San Jose State University in 1995. Mr. Lowe holds five patents in the U.S. related to helmets and impact protection. [ 112 ] At trial, Mr.

Lowe was qualified as an industrial designer and expert in helmet design and commercialization, with expertise in hockey, lacrosse, football, bike, snow and power sports. [ 113 ] Bauer called two expert witnesses, Mr. Christopher Withnall and Dr. Jeffrey Scott Delaney. [ 114 ] Mr. Withnall is a professional engineer working in the specialized field of human impact biomechanics for over twenty-seven years. His work primarily involves helmet design and testing, as well as preventing injury associated with impact to the human body.

He is an employee of and a minority shareholder in Biokinetics and Associates Ltd., a research and development organization that performs

its own research and development work and provides commercial testing services to third parties. Unrelated to this matter, Biokinetics and Associates Ltd. has previously performed helmet testing for both MIPS and Bauer. [ 115 ] Mr. Withnall is the chair of the Canadian Standards Association (CSA) working group on rotational acceleration measurement towards implementing rotational kinematics in ice hockey standards. He has also participated in American Standards for Testing and Materials [ASTM] helmet standards development since 1995, where he currently works on rotational acceleration issues.

He is a named inventor on numerous U.S. and Canadian patents related to helmets and helmet testing methods. [ 116 ] At trial, Mr. Withnall was qualified as a professional engineer, with expertise in

i) helmet design, construction and testing, including helmets for transportation, sports (including hockey and football), and police/military; and ii) the area of human impact biomechanics, including the biomechanics of inertially induced brain injury from mild concussions to catastrophic injury. [ 117 ] Dr. Delaney is an emergency and sports medicine physician and an associate professor in the Division of Emergency Medicine at McGill University, where he has taught since 1997. He obtained his M.D. from McGill University in 1991 and completed a Fellowship in Sports Medicine in 1997.

His research interests are focused on concussions and neck injuries. [ 118 ] At trial, Dr. Delaney was qualified as a medical doctor practicing in emergency medicine and sports medicine with expertise in the study and treatment of concussion and neck injuries in both the athletic and emergency department populations. C. Person skilled in the art [ 119 ] The person of skill in the art, whom may comprise a team, is the notional person through whose eyes a patent is to be construed and the prior art is to be considered.

The skilled person is unimaginative and uninventive, but is reasonably diligent in keeping up with developments in the area. The skilled person is not the lowest common denominator of the group, but the ordinary or average person. [ 120 ] There was little dispute between the parties as to the notional addressee of the patents. The notional person of ordinary skill in the art was identified by the experts as (Willinger Expert Report (TX-10) at paras 49-51, see also Lowe Expert Report (TX-45) at paras 25- 31 and Withnall Responding Report (TX-73) at para 10): 49.

The skilled person or team of persons would include someone with an academic background in industrial design or mechanical engineering, or someone with the equivalent practical experience as an industrial product designer in the helmet industry or academia. This experience would include the design of the look and shape of helmets in various sports and how all of the components are integrated into a functional unit. A product designer would typically have knowledge of the mechanical behaviour of materials and the manufacturing processes used to make helmets.

The product designer would understand the different choices for raw materials, fabrication issues, required tooling, and manufacturing equipment, as well as the costs associated with these design choices. 50. The skilled person or team of persons would also include someone with an understanding of biomechanics and the mechanisms of brain injury. This would be an individual with a degree in biomechanics or biomechanical engineering, or may include someone with the equivalent level of experience in industry or academia.

This experience would include an understanding of the different types of impacts that helmets may be exposed to, the performance of helmet components during impact, and how this performance affects the head and brain. 51. The above experience would also include an understanding that helmet test standards dictate what levels of exposure are considered acceptable for linear impacts and, where standards exists, for oblique impacts (expressed in terms of tangential force).

The skilled person would have an appreciation of helmet standards and knowledge of the appropriate standards that a helmet must meet to be offered for commercial sale. The skilled person would understand the certification standards including the test methodologies employed as well as what design features would be required to meet the standard. D. Common general knowledge [ 121 ] " “Common general knowledge” " is the knowledge generally known by the skilled person at the relevant time, and includes what the skilled person may reasonably be expected to know and be able to find out.

Common general knowledge can be derived from the practical question of what would in fact be known to the skilled person. It is not the same as " “public knowledge” " or the " “state of the art” " ( Uponor AB v Heatlink Group Inc , 2016 FC 320 at paras 46-48 ). While the common general knowledge may include information from the " “state of the art” " , just because information is known in the art does not necessarily mean it has become so widely known to become part of the common general knowledge. [ 122 ] Dr. Willinger and Mr.

Lowe defined the common general knowledge in their respective reports and there was no real dispute from Mr. Withnall with respect to their definition. [ 123 ] The skilled person would be familiar with helmets and helmet design, and would be familiar with the variety of different sports and activities where helmets are required. The skilled person would be familiar with the common components found in sports helmets.

These components include: an outer shell, made of one or two pieces (with a hockey helmet typically being a two-shell adjustable helmet); an energy absorbing layer; a comfort liner or comfort padding; and various methods to adjust the size or fit of the helmet. [ 124 ] The skilled person would also be familiar with the physics and mechanical principles that go into helmet design. The skilled person would understand that helmet design involves an appreciation of the impact conditions that the human head may be subject to, depending upon the activity in question.

The skilled person would understand that impacts are typically assessed according to the initial velocity of the helmeted head just prior to impact. The skilled person would understand that there are three main types of head injury mechanisms: skull fractures, subdural haematomas, and neurological injuries, such as concussions.

[ 125 ] The skilled person would understand that helmets are typically designed to protect against linear impacts, understood as impacts perpendicular to the surface being impacted. However, by the years 2010-2011, the skilled person would understand that helmets must also be designed to protect against rotational impacts, which are responsible for causing serious brain injury, including concussions. Rotational impacts are also known as oblique or tangential impacts. A rotational impact can be described as an impact coming at an angle relative to the surface being impacted.

Thus, by the years 2010-2011, the skilled person would know that helmets must also include components to protect against rotational acceleration to the brain. [ 126 ] The skilled person would be aware of the different certification standards that must be met for a helmet to be sold commercially, and understand that the standards may differ according to geographical jurisdiction. The skilled person would also have an understanding of the various helmet testing methodologies that are used to meet these certification standards. E.

Claim construction – legal principle [ 127 ] In Wellcome Foundation, above, the Supreme Court of Canada described Canada’s patent system as being based on a " “bargain” " whereby an inventor is granted exclusive monopoly rights in an invention, but only in exchange for full and frank disclosure of that invention: [37] A patent, as has been said many times, is not intended as an accolade or civic award for ingenuity. It is a method by which inventive solutions to practical problems are coaxed into the public domain by the promise of a limited monopoly for a limited time.

Disclosure is the quid pro quo for valuable proprietary rights to exclusivity which are entirely the statutory creature of the Patent Act . [ 128 ] The disclosure requirement is captured in subsection 27(3) of the Patent Act , RSC 1985, c P-4. Paragraph 27(3) (

a) requires that an inventor, in his or her specification, " “correctly and fully describe the invention and its operation or use as contemplated by the inventor” " . Paragraph 27(3) (

b) further requires the inventor to set out clearly the method of constructing, making, compounding or using the invention in such full, clear, concise and exact terms as to enable a person skilled in the art to make, construct, compound or use the invention. [ 129 ] To meet that bargain, the inventor is required to disclose his or her invention in sufficient enough detail to enable the skilled person to make the same successful use of the invention, when the monopoly has expired, as the inventor could at the time the application was filed ( Teva Canada Ltd v Pfizer Canada Inc , 2012 SCC 60 at paras 70-71 ). [ 130 ] The first step in a patent dispute is to construe the claims at issue.

They must be given the same

interpretation for the purposes of both the infringement and validity analyses ( Whirlpool Corp v Camco Inc , 2000 SCC 67 at paras 43 , 49(b)). However, the claims should not be construed without understanding where disputes between the parties lie, or " “where the shoe pinches” " ( Valence Technology Inc v Phostech Lithium Inc , 2011 FC 174 at para 62 , aff’d 2011 FCA 237 ). [ 131 ] The patent has two distinct sections: the claims and the description or disclosure ( Patent Rules , SOR/96-423, s 2 and Patent Act , s 27(3), 27(4)).

The claims are the starting point which define the statutory monopoly (Roger T Hughes et al, Hughes and Woodley on Patents, 2nd ed (Toronto: LexisNexis, 2005) (loose-leaf updated 2018) at 305). If the language of the claims is clear and unambiguous, it is unnecessary to resort to the description. The description can otherwise be used to assist in understanding unclear terms used in the claims, but never to vary their scope or ambit.

In other words, it could assist in comprehending the meaning of the words of the claims chosen by the patentee (Hughes, above at 316). [ 132 ] The Patent Act and the purposive construction mandated by the Supreme Court of Canada in Free World Trust v Électro Santé Inc ( 2000 SCC 66 at paras 30-31 ) require adherence to the language of the claims, which promotes fairness and predictability.

The claim language must be read in an informed and purposive way, rather than a purely literal one. [ 133 ] A purposive construction gives meaning to the words of the claims with regard to the intention of the inventor, as disclosed in the patent. The analysis identifies the particular words or phrases in the claims that describe what the inventor considers to be the " “essential” " elements of the invention. The elements of a claim are presumed to be essential.

For an element to be considered non- essential, sufficient evidence must establish that the person skilled in the art would understand that the omission or substitution of the specific element would have no effect on the way the invention works ( Free World Trust , above at para 31 ). [ 134 ] The assumption that claims are not redundant is known as the principle of " “claim differentiation” " and was well described by this Court in Halford v Seed Hawk Inc , ( 2004 FC 88 , aff’d 2006 FCA 275 ): [93] In its simplest form, claim differentiation simply requires that "limitations of one claim not be 'read into' a general claim".

A more expansive comment on claim differentiation appears in D.M.I., Inc. v. Deere & Co. : The district court said "As a general rule a limitation cannot be read into a claim to avoid infringement" … Where, as here, the limitation sought to be "read into" a claim already appears in another claim, the rule is far more than "general". It is fixed. It is long and well established. It enjoys an immutable and universally applicable status comparatively rare among rules of Law.

Without it, the entire statutory and regulatory structure governing the drafting, submission, examination, allowance and enforceability of claims would crumble. This court has confirmed the continuing life of the rule ... Indeed, in Kalman, this court quoted with approval this clear statement of the rule found in Deere & Co. v. International Harvester Co .: Where some claims are broad and others narrow, the narrow claim limitations cannot be read into the broad whether to avoid invalidity or to escape infringement. [Citations omitted.]

[ 135 ] Finally, the skilled person will approach the claims and the disclosure of a patent with " “a mind willing to understand, not [with] a mind desirous of misunderstanding” " ( Lister v Norton Brothers & Co (1886), 3 RPC 199 (Ch

D) at 203). The skilled person is going to try to achieve success; the skilled person is not one who is looking for difficulties or seeking failure ( Free World Trust , above at para 44 ). F. MIPS 542 Patent

(1) Construction of the MIPS 542 Patent [ 136 ] Only those claims of the MIPS 542 Patent that contain points of contention between the parties will be addressed in this section. (

a) Claim 1 of the MIPS 542 Patent [ 137 ] Claim 1 of the MIPS 542 Patent reads as follows, with the points of contention set out in bold, for emphasis: A helmet, comprising: an energy absorbing layer comprising an energy absorbing material that absorbs energy by compression of the energy absorbing material, the energy absorbing layer including an inside surface and an outside surface opposite the inside surface such that the inside surface is adapted to be closer to a wearer's head than the outside surface and the inside surface faces the attachment device; an attachment device provided for attachment of the helmet to the wearer's head ; and a sliding facilitator , wherein the sliding facilitator is provided between the inside surface of the energy absorbing layer and the attachment device, wherein the sliding facilitator is fixated to at least one of the attachment device or the inside surface of the energy absorbing layer for providing slidability between the energy absorbing layer and the attachment device . [ 138 ] The " “ attachment device ” " contemplated in claim 1 is a new concept for helmets.

It is not a term commonly used in the industry and it should not be confused with a retention system, such as a chin strap. Paragraph 10 of the MIPS 542 Patent helps the reader understand what an attachment device is not: " “Chin straps or the like are not attachment devices according to the present embodiments of helmets.” " This is also consistent with figure 2 of the MIPS 542 Patent (JBD-986), which shows the attachment device (3). [ 139 ] That distinction, however, does not mean, as suggested by Mr. Withnall, that the attachment device has an extra function, that of retaining the helmet on the wearer’s head.

Nor does it mean that the helmet could be worn without a chin strap. In fact, a MIPS II bike helmet without a chin strap would likely not conform to the industry standard. [ 140 ] That said, Dr. Willinger described the attachment device as providing an interface surface between the wearer’s head for interaction with the energy absorbing layer. He said that this is a necessary structural element of the helmet described in the patent, as it provides an anchored surface on the wearer’s head that can interact with the inside surface of the energy absorbing layer. To illustrate his point, Dr.

Willinger described the attachment device as a cap that provides " “anchoring” " of the helmet to the wearer’s head. He stated that the wearer’s head needs to " “be securely held within the attachment device when the helmet is worn” " (TX-10 at paras 75, 78). [ 141 ] Mr. Lowe construed the " “attachment device” " to require that it be " “coupled” " to the wearer’s head, and that it " “[stay] coupled to the wearer’s head upon an impact to the helmet” " (TX-45 at para 65), allowing sliding between the attachment device and the inner padding. For Mr.

Lowe, prior to the MIPS II technology, there was no additional component between the comfort padding and the energy management layer. The attachment device was introduced by the inventor as a new component to couple to the head to create an interface between the head and the energy management layer to permit decoupling during a tangential impact. Upon impact, the purpose of the attachment device is to create a decoupling surface that slides first, before any sliding between the head and the attachment device occurs. [ 142 ] However, when considering infringement, both MIPS’ experts broadened their

interpretation of the attachment device and

minimized the degree of attachment needed in order to achieve the purpose of the invention. They suggested that: temporary or " “impact-only” " attachment is sufficient; the attachment device need only " “rest on and around the wearer’s head” " ; the attachment device need only be " “configured to fit the wearer’s head or at least a portion of the wearer’s head” " ; and the attachment device need only be the component that is " “closest to the wearer’s head” " . [ 143 ] On the other hand, Mr.

Withnall construed the " “attachment device provided for attachment of the helmet to the wearer’s head” " of claim 1 to require that the attachment device provide a fixation or coupling to the wearer’s head, such that a reliable and secure alignment of the helmet on the wearer’s head is maintained both prior to and during an impact. [ 144 ] All experts agree that the attachment device must maintain its position during an impact in order for decoupling to take place between the helmet and the attachment device, at least before any decoupling is possible between the attachment device and the wearer’s head.

Figures 3 and 4 of the MIPS 542 Patent demonstrate what takes place during an impact. The attachment device (3) maintains its position on the wearer’s head notwithstanding an oblique impact (the " “I” " arrow), in order for the energy absorbing layer (2) and outer shell (1) to slide relative to the attachment device (3) and thus become decoupled from the wearer’s head. [ 145 ] In my view, the MIPS 542 Patent does not provide for temporary or impact-only attachment. The attachment device needs to be coupled to the wearer’s head on most of the surface covered by the helmet.

In order to achieve that goal, and to remain attached to the wearer’s head while decoupling in any given direction, all parts of the attachment device need to remain solidary amongst them.

The references in the specification to a cap or a head band confirm that the attachment device needs to fit the wearer’s head (like a cap) or at least a portion of the wearer’s head (like the head band shown in most of the MIPS 542 Patent figures). [ 146 ] First, not only are the words " “at the time of impact” " or any similar expression absent from claim 1, but figures 2 and 3 of the MIPS 542 Patent demonstrate that the attachment device provides the same level of attachment to the wearer’s head both prior to and during an impact. [ 147 ] Second, the original and more limited

interpretation of the attachment device provided for by MIPS’ experts is more in line with the plain wording of claim 1.

[ 148 ] Third, I agree with Mr.

Withnall that since it is impossible to predict the angle of an impact and since the sliding or decoupling is multi-directional, it is important that the attachment device maintains the helmet in the correct position prior to an impact in order for the invention to function. [ 149 ] As a result, I am of the view that a person skilled in the art would understand the attachment device not as being what keeps the helmet on the wearer’s head at the time of impact, but rather as being what mostly stays in place on the wearer’s head when, at the time of an impact, the helmet rotates on the wearer’s head in any given direction.

The attachment device is thus what allows for full, and not partial, decoupling between the helmet and the wearer’s head when the head is subject to rotational impact. [ 150 ] The " “ sliding facilitator ” " is fixated to at least one of the attachment device or the inside surface of the energy absorbing layer to provide slidability. [ 151 ] The debate regarding the meaning of this component of claim 1 is crucial, as it will confirm whether or not friction is one of the mechanisms disclosed by the inventor to absorb rotational energy. [ 152 ] According to MIPS’ experts, a sliding facilitator merely encourages or allows relative movement between the attachment device and the rest of the helmet.

They are of the view that it does not need to improve slidability and that, although a low friction interaction is preferred, it is not required. [ 153 ] They rely on the five different places in the MIPS 542 Patent where the sliding facilitator is referenced, and in each place the description speaks of " “allowing” " or " “permitting” " slidability – rather than maximizing slidability or minimizing friction.

In the words of the patent (at para 15): " “The sliding facilitator gives the helmet a function (slidability).” " Without a sliding facilitator in the helmet that functionality, according to them, is absent. [ 154 ] They add that the sliding facilitator may be a low friction material, but it doesn’t have to be.

Potential low friction materials may include: a waxy polymer, such as PTFE (Teflon), PFA (PerFluoroAlkoxy), FEP (Polyfluoroethylenepropylene), PE (Polyethylene) and UHMW PE (Ultra-high molecular weight polyethylene), or a powder material, which could be infused with a lubricant (see para 44 of the MIPS 542 Patent).

They are of the view that the skilled person would understand that the type of sliding facilitator would be dependent on the application for which the helmet will be used and the magnitude of expected impacts, and would understand how to tune the type of material and resulting friction for the application they are working on. [ 155 ] Mr. Withnall, on the other hand, opines that the use of the term " “sliding facilitator” " suggests a separate component of the helmet that enables sliding and submits that the claim promotes a low friction interaction between the attachment device and energy absorbing layer.

According to Bauer, friction is thus not a significant means of reducing rotational energy in the MIPS II technology. [ 156 ] First, I do not agree with MIPS that without a sliding facilitator, the slidability function of the invention would be absent. Since the attachment device is not solidary to the energy absorbing layer, movement or slidability would be possible without a sliding facilitator, though to a lesser extent. [ 157 ] Second, I also do not agree that a sliding facilitator only allows for slidability.

In my view, it needs to facilitate, aid, promote or make sliding between both surfaces easier than without the presence of a sliding facilitator. [ 158 ] The ASTM International definition of friction is: Friction is the resisting force that arises when a surface of one substance slides, or tends to slide , over an adjoining surface of itself or another substance. (ASTM Standard D1894, 1993, “Standard Test Method for Static and Kinetic Coefficients of Friction of Plastic Film and Sheeting” , ASTM International, West Conshohocken, PA, 1993) [Emphasis added.] [ 159 ] The more sliding there is between two surfaces, the lower the resistance and thus the lower the amount of friction.

Slidability and friction are, according to that definition, inversely proportional. [ 160 ] On the other hand, in order to create friction, what’s required are two surfaces that slide or tend to slide against one another. The minute the surfaces slide, friction occurs – the level of which will depend on the level of resistance. [ 161 ] It is important to point out that all experts agree on the fact that most impacts have both linear and tangential components. They also agree that the greater the amount of linear impact energy, the mo

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