Bauer Nike Hockey Inc. v. Regan

Bauer Nike Hockey Inc. v. Regan

Court applied the broad but limited relevance standard for discovery: because Bauer pleaded obviousness, evidence of commercial success (royalties paid to DuPont) is relevant and must be answered; the inventor must disclose identifying factual witnesses who may recall a prior disclosure timed to affect validity; solicitor-client privileged patent prosecution materials need not be compelled; an inventor is not obliged to perform technical analyses or interpret patent claims regarding third‑party products, but must answer factual technical questions about his own product.

Citation
2003 FC 1174
Parties
Plaintiff/defendant by Counterclaim: BAUER NIKE HOCKEY INC.; Defendant/plaintiff by Counterclaim: PAUL REGAN
Court
Federal Court
Jurisdiction
Canada
Judgment Date
8 October 2003
Procedural Posture
Patent Infringement and Validity / Motions Regarding Examination for Discovery
Outcome
Motions partially granted and partially dismissed
Legal Topics
Validity, Infringement, Discovery, Solicitor Client Privilege, Commercial Success as Evidence of Non Obviousness
Source Language
English
Patent Law Intellectual Property Civil Procedure Evidence Validity Infringement Discovery Solicitor Client Privilege +1 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Legal principles 3 Authorities cited 3 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Parties

BAUER NIKE HOCKEY INC.

Plaintiff/defendant by Counterclaim

PAUL REGAN

Defendant/plaintiff by Counterclaim

Procedural Posture

Patent Infringement and Validity / Motions Regarding Examination for Discovery

Legal Issues

  1. 1 Whether Bauer must disclose royalty payments to DuPont as bearing on commercial success raised by its pleadings on obviousness
  2. 2 Whether Mr. Regan must disclose names and addresses of teammates who may have seen the product pre-dating the patent application
  3. 3 Whether Bauer/Regan must produce patent agent file and billing records potentially subject to solicitor-client privilege

Ratio Decidendi

Court applied the broad but limited relevance standard for discovery: because Bauer pleaded obviousness, evidence of commercial success (royalties paid to DuPont) is relevant and must be answered; the inventor must disclose identifying factual witnesses who may recall a prior disclosure timed to affect validity; solicitor-client privileged patent prosecution materials need not be compelled; an inventor is not obliged to perform technical analyses or interpret patent claims regarding third‑party products, but must answer factual technical questions about his own product.

Court Disposition

Motions partially granted and partially dismissed

Orders

  • Defendant to answer Question 226 regarding whether Bauer has paid royalties to DuPont and, if so, the amounts.
  • Defendant to provide names and addresses responsive to Questions 1177-1180 (persons who played hockey with Regan in 1997 and 1998).