CCM Scores With Obviousness Attack on Bauer’s Hockey Skate Patent

Bauer Hockey Ltd. v. Sport Maska Inc. (CCM Hockey), 2020 FC 624 was a patent infringement battle between two well-known skate manufacturers.

The main components of the boot of a skate are called the “quarters”. Traditionally, there were two quarters: one on each side of the foot that were sewn together at the back of the boot. Bauer held a patent relating to skates with a quarter made in one piece, rather than two.

Bauer sued CCM for patent infringement and it took eight years to reach trial. The case largely turned on claims construction, a question of law. Justice Grammond expressed dismay that the parties did not deal with the issues by way of  summary judgment or summary trial, which would have saved “a considerable amount” of judicial resources and legal costs. Justice Grammond noted that these costs will ultimately be borne by Canadian consumers: “I suspect that both parties will pass their litigation costs on to their customers, it is ultimately skaters and hockey players across Canada who will bear the burden of the parties’ strategic choices.”

The judgment provides some useful commentary on the extent to which the specification may be relied upon to construe patent claims. Following the Court of Appeals’ decisions in Dableh v Ontario Hydro, [1996] 3 FC 751 and Monsanto, Bauer argued that claim construction should not involve reference to the disclosure and drawings if the language of the claim is clear. The Court disagreed, holding that modern claims construction is aimed at helping the interpreter find clues about a claim’s meaning. The clues do not have a hierarchy or predetermined order. Courts have rejected the “plain meaning rule”, which is the idea that if one category of clues (i.e. the text language) provides a “clear” answer then the other clues must be disregarded, noting that such an approach was not applied by the Supreme Court of Canada in Consolboard and Whirlpool or more recently by the Court of Appeal in Tetra Tech and Tearlab. Although cases caution against interpretations that would enlarge or narrow the scope of the claim, Justice Grammond noted that this rule becomes illogical if taken too literally:

How can we tell whether the interpretive process is widening or narrowing the scope of the claims, as that scope is to be ascertained by interpretation in the first place? More realistically, the prohibition against widening or narrowing is a reminder that the interpretive process must remain faithful to the text of the claims. In other words, the interpretation chosen must be one “that the […] language can reasonably bear.

Section 53.1 of the amended Patent Act provides that communications between the patentee and the Patent Office “may be admitted into evidence to rebut any representation made by the patentee in the action or proceeding as to the construction of a claim in the patent.” The Court held there is no need to identify a particular representation and rebuttal every time a reference is made to the prosecution history. The communications are simply integrated in the interpretive process as long as the issue is one of claims construction.

The principle of claim differentiation presumes that patent claims are drafted so as not to be redundant. The Court noted that this is a rebuttable presumption, not a hard and fast rule. In particular, the presumption is weakened where the patent appears not to have been drafted with great care.

Where a patent describes preferred embodiments of the invention, one should not presume that everything described or shown is essential. There may be other ways of practicing the invention. But while there “may” be other ways, this principle is not a licence to widen, ex post facto, the scope of the claims.

With these principles in mind, the Court construed the disputed claim term “lasted skate boot” and “foxing portion” before turning to obviousness.

The gap between the prior art and the inventive concept in this case was apparent from the patent itself: the quarter, which was formerly made of two separate pieces, is now made of a single piece. The Court held that this involved simple pattern-making techniques and it would have been obvious to any pattern-maker in any industry that two pieces cut separately and later sewn together could be cut in a single piece. The only difficulty would be ensuring the proper 3D shape, but Bauer’s expert admitted that the skilled person would have known how to give a 3D shape to flat material.

The ”Beloit question” asks: if the invention is obvious why did no one do this before? Here, the answer was a matter of economics rather than ingenuity: using two pieces was easier and resulted in less wasted material (i.e. lower costs). Thus, it did not assist Bauer:

Obviousness relates to technical feasibility, not to economic or commercial considerations. Where a design was never adopted because it was not profitable to do so, that does not render it any less obvious.

Bauer sought to rely on the commercial success of skates incorporating one-piece quarters. However, the Court held there must be a causal nexus between the success and the claimed invention and the patentee must show that the successful product is covered by the relevant claims of the impugned patent. Where a product incorporates several innovative features, the relative contribution of each to the alleged commercial success must be assessed. There was no evidence that the success was attributable to the quarter pattern as opposed to other factors and Bauer did not establish that the successful skates comprised the other elements of the asserted claims.

Justice Grammond held that Bauer’s patent was obvious and dismissed the action.

A copy of the decision can be found here.