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Bauer Hockey Helmets Avoid Infringement Injury

On May 7, 2018 the Federal Court granted MIPS action in part, findings its patent valid but not infringed by Bauer’s RE-AKT and RE-AKT 100 helmets while invalidating a single claim from the four Bauer patents at issue.


MIPS, a global leader in sports helmet technology, alleged that Bauer’s RE-AKT and RE-AKT 100 hockey helmets infringed Canadian Patent No. 2,798,542 (the “MIPS 542 Patent”). MIPS also sought a declaration that four Bauer patents were invalid or in the alternative that its employees are inventors, or co-inventors, of the claimed subject matter, which gave MIPS an ownership interest in the Bauer Patents.

Inventorship & Ownership

MIPS basis for alleging inventorship stems from a multi-stage partnership between MIPS and Bauer. The first stage of the partnership involved MIPS performing tests on Bauer helmets. During the course of testing MIPS suggested a modification that was ultimately incorporated into the Bauer patents. The Court found, however, that Bauer had arrived at those modifications prior to and independently from MIPS’ suggestions and that MIPS did not contribute to the inventive concept of the Bauer patents. The Court further held that even if the modifications had come from MIPS, the IP rights in the Bauer patents would still be vested in Bauer by virtue of the non-disclosure agreement entered into between the parties.

Non-Infringement of the MIPS 542 Patent

All claims of the MIPS 542 Patent include, as an essential element, an “attachment device”, which was construed to mean the portion of the helmet that mostly stays in place on the wearer’s head when, at the time of impact, the helmet is subject to rotational impact, which is identified as element “3” in Figures 2 and 3 of the MIPS 542 Patent:


MIPS argued that the SUSPEND-TECH and SUSPEND-TECH 2 floating liners used in Bauer’s RE-AKT and RE-AKT 100 helmets are attachment devices as claimed in the MIPS 542 Patent. The Court found that Bauer’s floating liners are not attachment devices as used in the MIPS 542 Patent because they do not stay fully coupled to the wearer’s head upon impact, holding:

The SUSPEND-TECH floating liner does not attach to the wearer’s head, but rather to the helmet as its comfort padding. Put differently, the mere fact that the SUSPEND-TECH floating liner is not completely solidary with the energy absorbing layer — as if it was glued — is not sufficient to make it an attachment device as per the MIPS 542 Patent. The feature of relative motion is not sufficient either. The SUSPEND-TECH floating liner simply does not perform in the same way as the MIPS 542 Patent’s attachment device.

I am also of the view that all of the above comments apply equally to the SUSPEND-TECH 2 floating liner, even though it has more of a cap/head-band shape.

Having found that Bauer’s helmets are missing the essential “attachment device”, the Court held there was no infringement of the MIPS 542 Patent.

Validity of the MIPS 542 Patent

Bauer also argued MIPS 542 Patent was invalid for anticipation, obviousness and overbreadth. Bauer’s anticipation and obviousness arguments failed as the Court found the attachment device of the MIPS 542 Patent was not disclosed in any of the prior art relied upon by Bauer.

With respect to overbreadth, Bauer argued that a “fixation member” is an essential element of the invention that is missing from claim 1. Based on the evidence, the Court disagreed, holding that “fixation members” are not necessary parts of the invention and therefore Bauer’s overbreadth argument failed.

The Bauer Patents

MIPS argued that the four Bauer patents were obvious in light of MIPS own public disclosure and sale of its technology and that the three divisional patents were invalid for double patenting.

The Court found that the inventive concept of claim 1 of the first Bauer patent was a rotational impact protection device for a two-shell adjustable sports helmet that permits relative movement between the head and the outer shell during an oblique impact and absorbs energy through friction. The Court held that it would have been obvious to apply previously publicly disclosed MIPS technology to a two-shell helmet, thereby rendering claim 1 obvious. The Court held, however, that claims 9, 11, 14 and 16 all added non-obvious elements and therefore only claim 1 was invalid.

The Court also dismissed MIPS double patenting arguments, holding that Bauer legitimately used divisional applications to protect the subject of the additional inventions disclosed in its original application

A copy of the Federal Court’s Judgment and Reasons can be found here.