On August 12, 2021, the Federal Court of Appeal dismissed Bauer's appeal, which sought to overturn the May 2020 dismissal of Bauer's patent infringement lawsuit against CCM on the basis that the asserted patent was invalid.

In a case first commenced in 2012, Bauer asserted infringement of a patent to the design of a skate "quarter", a structural component of a skate, against a wide range of CCM's hockey skates. After a lengthy trial, Justice Grammond dismissed Bauer's claim, holding that the proper construction of the patent was narrower than Bauer asserted and that the claims were obvious.

In a unanimous decision, the panel dismissed Bauer's appeal on the basis that there was no reviewable error in the obviousness analysis. The Court highlighted the importance of standard of review, especially when addressing a fact-dependent obviousness analysis. The Court noted that there was sufficient evidence to support the Trial Judge's decision.

The Court also strongly rejected Bauer's position that a more detailed review of the decision should be taken in light of the Trial Judge's limited experience with patent law. The Court noted its discomfort with the idea that the degree of appellate intervention would be influenced by the subjective knowledge of the trial judge, rather than the specifics of the decision. In accordance with the holding of the Supreme Court of Canada in Housen, the panel applied the well-settled standard of review of correctness for issues of law, and palpable and overriding error for issues of fact.

Though not necessary to its decision, the Court did raise a concern regarding the Trial Judge's summary of the use of file wrapper estoppel under section 53.1 of the Patent Act, which allows the file history to be admitted into evidence at trial to rebut a representation made by the patentee in the action based on statements made during prosecution of the patent. The Trial Judge had commented that as soon as claims construction is at issue, the patentee is making "representations" regarding the proper construction and therefore the prosecution history is admissible to this interpretive process. In the Trial Judge's view, this eliminated the need to identify each and every specific inconsistency. The Court of Appeal disagreed, noting that the language of section 53.1 required that inconsistent positions of the patentee first be identified before resorting to the file history.

CCM was represented at trial and on appeal by Jay Zakaib, Frederic Lussier, Erin Creber, and Alexander Camenzind, from Gowling WLG's Ottawa office.

Should you have any specific questions about this article or would like to discuss it further, you can contact the authors or a member of our Intellectual Property Group.