Testing is not Invention

MIPS AB v Bauer Hockey Ltd 2018 FC 485 Gagné J
            2,798,542 [MIPS Patent]
            2,784,316 / 2,821,540 / 2,838,103 / 2,847,669 [Bauer Patents]

MIPS v Bauer concerns an invention near and dear to me, namely sports helmets designed to absorb rotational energy in order to minimize brain injury. (I do a lot of cycling, and all of my current helmets are equipped with MIPS technology.) Both Bauer and MIPS had developed and patented technology addressed at this problem. In this litigation, MIPS alleged that it was a co-inventor of the Bauer technology; that the Bauer products infringed the MIPS patent, and that the Bauer patents were invalid. In response, Bauer attacked the validity of the MIPS patent. The decision, that the MIPS employees were not co-inventors of the Bauer technology, the MIPS patents were valid but not infringed, and that the narrower claims of the Bauer patents were valid, turned on the facts and claim construction.

MIPS was an early leader in this technology, which is at the core of MIPS’ business. MIPS was founded in 2001 [15], and a patent for its first generation technology (MIPS I) was granted in Sweden in 2002. MIPS I used a sliding facilitator apparatus to allow rotational movement between the hard outer shell of the helmet and the inner energy-absorbing layer [13]. Its first product using this technology, an equestrian helmet, was launched in 2007 [16]. MIPS II technology was developed starting in 2009 [19], to address in-mold helmets, in which the inner energy absorbing layer is fused directly to the outer shell, making it impossible to place a sliding facilitator between the two. MIPS II technology uses an “attachment device” (3) as an interface between the wearer’s head and the inner energy absorbing layer, allowing relative rotation between the head and the inner layer.




Concussions are an increasing concern in hockey, and around the same time as MIPS was developing MIPS II, Bauer was also developing a technology to address rotational impact, specifically in hockey helmets, known as RE_AKT, using a SUSPEND-TECH floating liner.

Rotational impact is a relatively new concern in helmet design, and older testing equipment had been made to test only linear impact. The inventorship dispute arose because part-way through its development cycle, Bauer lost its academic partner responsible for testing, and Bauer, which had become aware of the MIPS I helmet, approached MIPS with the aim, as Gagné J held, of having MIPS test the Bauer designs. Gagné J’s decision recounts the details of the collaboration, but at the end of the day, she held that the MIPS team were not co-inventors of the Bauer product. The legal principle is that a party who tests an invention does not thereby become a co-inventor [93], and in this case Bauer employees had wholly conceived of the inventive concept, which had only been tested by MIPS [94], [100]. She noted that a series of events and coincidences (such as the fact that the inner liner on both products happened to be made of yellow material) had contributed to MIPS’ misperception of the facts [91].

On the issue of infringement, the MIPS products use an attachment device which is fixed securely to the head, with elastic fixation members between the attachment device and the inner energy absorbing layer. The attachment device and inner layer slide freely against one another, and energy absorption is achieved by deformation of the fixation members. The Bauer helmets, in contrast, have a floating liner, which is not securely attached to the head, and there are no fixation members as such, but rather energy absorption is provided by friction between the liner and the inner layer [184]. As Gagné J noted, to determine infringement, the defendant’s product is compared with the patent, not with the plaintiff’s product, even if that product embodies the invention. She held that using friction as a mechanism for absorbing rotational energy did fall within the broadest claims of the MIPS patent [163]. However, she also held that the claimed attachment device had to be coupled to the head, both before and during impact, and Bauer’s SUSPEND-TECH floating liner did not operate in that manner [192]. In effect, MIPS had not invented the concept of permitting rotation decoupling between the head and the helmet, but only one way of achieving that decoupling, and Bauer had independently developed another method. Because the attachment device was a crucial element of the claims, the Bauer products did not infringe [192], [197]. (MIPS also lost on other independent points, so the finding of no infringement did not rest on this issue alone [219].)

Bauer’s attack on the MIPS patent on the basis of anticipation and obviousness failed in large part because MIPS got caught in an infringement / validity squeeze [231], [243]. Because the court construed the “attachment device” more narrowly than MIPS’ experts, the validity attacks failed but so did infringement claim. A broader interpretation of the element would have led to a finding of invalidity [244]. (An overbreadth attack also failed on the facts [256].)

MIPS attacked the Bauer patents as being obvious in light of the MIPS II technology, which was on sale before the Bauer patent application was filed [257]. The broadest Bauer claim was held to be invalid for obviousness, on the basis that it would have been obvious to a skilled person to put a MIPS attachment device inside a hockey helmet, and that would fall within the claims [286], [287]. However, the narrow claims, addressed to Bauer’s specific implementation, were upheld [294].