Bauer Hockey Ltd. v. Sport Maska Inc. (CCM Hockey)

Bauer Hockey Ltd. v. Sport Maska Inc. (CCM Hockey)
Court (s) Database
Federal Court Decisions
Date
2020-05-15
Neutral citation
2020 FC 624
File numbers
T-546-12
Decision Content
Date: 20200515
Docket: T-546-12
Citation: 2020 FC 624
Ottawa, Ontario, May 15, 2020
PRESENT: Mr. Justice Sébastien Grammond
BETWEEN:
BAUER HOCKEY LTD.
Plaintiff
Defendant by Counterclaim
and
SPORT MASKA INC. DOING BUSINESS AS CCM HOCKEY
Defendant
Plaintiff by Counterclaim
JUDGMENT AND REASONS
Table of Contents
I. Background 3
A. The Parties 3
B. Skate-Making 4
C. Bauer’s Patent 6
D. The Claim and the Trial 10
II. Preliminary Issues 12
A. Defining the Person Skilled in the Art 13
B. Defining Common General Knowledge 14
C. Claims Construction 18
(1) General Principles 18
(2) Disputed Terms 28
III. Validity 42
A. Anticipation 42
(1) General Principles 43
(2) Application 44
B. Obviousness 51
(1) General Principles 51
(2) Application 55
(3) Summary on Obviousness 69
IV. Infringement and Compensation Issues 69
V. The Easton Case 70
VI. Disposition 73
[1]
This action involves two well-known skate manufacturers, Bauer and CCM. Bauer obtained a patent for a pattern for a component of skates called the quarter. It is now suing CCM for infringement of that patent.
[2] While many issues were canvassed by the parties at trial, two of them are determinative.
[3] First, Bauer’s expansive interpretation of the claims of its patent, which would cover a wide range of CCM skates, cannot be accepted. Bauer’s proposed interpretation is not grounded in the wording of the claims or the disclosure. It attributes a purpose other than that explicitly identified in the disclosure. It is also incompatible with the patent’s prosecution history.
[4] Second, the patent claims asserted by Bauer are obvious. Making the quarter in one piece, whereas it was formerly made of two pieces sewn together, is not an inventive step deserving of patent protection. Even taking into account the surrounding context, a skilled person at the relevant time would have readily come to that solution.
[5] As a result, Bauer’s action will be dismissed and CCM’s counterclaim, which seeks a declaration of invalidity, will be allowed.
I. Background
[6] Bauer’s action is based on Canadian patent no 2,214,748 [the ‘748 patent or Bauer’s patent]. For a proper understanding of the issues in dispute, it is useful to begin these reasons by a presentation of the parties, a brief description of skate manufacturing, an account of the events that led to the invention disclosed in Bauer’s patent and a summary of the trial.
A. The Parties
[7] Initially founded as a footwear manufacturer in 1927, Bauer quickly began to make skates. In the 1980s, Bauer gradually abandoned making boots and other kinds of footwear to concentrate on hockey equipment and skates in particular. While market shares may be difficult to quantify precisely, it is fair to say that during the period relevant to this action, Bauer held the largest share of the worldwide market for skates.
[8] Throughout its history, the Bauer company has changed its structure, corporate name and ownership several times, while maintaining its distinctive identity and brand. In particular, from 1996 to 2008, Bauer was owned by Nike, a global manufacturer of athletic footwear. For part of that period, Bauer manufactured skates under both the Bauer and Nike brands. In 2017, Bauer underwent a reorganization under the Companies’ Creditors Arrangement Act, RSC 1985, c C-36. Because I am dismissing the action for other reasons, I need not address the consequences of that reorganization on Bauer’s right to claim damages. Thus, I will use the name Bauer to refer to the Bauer company as it existed from time to time.
[9] The defendant, Sport Maska Ltd, does business as CCM Hockey. I will call it simply CCM in these reasons. It manufactures hockey equipment, including skates. In 2004, it was acquired by Reebok, an international manufacturer of athletic footwear and began selling skates under both the CCM and Reebok brands. In 2017, it was sold to a private investment fund. It is fair to say that during the relevant period, CCM had a significant share of the worldwide market for skates, although a smaller one than Bauer’s.
B. Skate-Making
[10] Skates have existed in various forms for centuries. It is not necessary, for the purposes of these reasons, to provide a complete history of the evolution of skates. I will simply describe the traditional method for making skate boots and the evolution of that method in the years preceding the invention at issue.
[11] Ice skates are comprised of a boot to which a blade and blade holder are attached. In the case of roller skates, the blade and blade holder are replaced with a carriage and wheels. The main components of the boot are called the “quarters”. There are traditionally two quarters (one on each side of the foot), which are sewn together at the back of the boot and extend forward on each side of the foot. Together with the toe cap, tongue and other components, they form what is called the “upper” of the boot. One of the figures of Bauer’s patent, as annotated by one of Bauer’s experts and showing the quarter outlined in bold, helps visualize these components:
[12] The components of skate boots are assembled through a process that was initially developed in the shoe industry and is known as “lasting”. Although the process is inherently variable, its main steps are as follows. The various components of the upper, traditionally made of leather, are cut in the appropriate pattern and then sewn together. Once those components are assembled, the upper is placed upside down onto a “last,” which is a form that approximates the shape of a foot, and the insole is placed between the last and the upper. A lasting machine then pulls the edges of the upper, also called the “lasting margin” and folds them onto the insole. They are then nailed or glued to the insole. Excess material may then be sanded or ground down, after which the outsole can be fixed to the upper. Counters and overlays may be added to the upper at different stages of the process. When the boot is completed, a blade holder is riveted to the sole.
[13] In the period ranging approximately from 1970 to 1995, several innovations were introduced to the skate industry. One of them is the use of injection moulding to manufacture entire skate boots or skate boot components. When the full skate boot is moulded in one piece, no lasting process is needed; I will return to this issue later in these reasons. The period also saw the gradual replacement of leather with synthetic materials, such as ballistic nylon, which provided more rigidity.
C. Bauer’s Patent
[14] In the mid-1990s, Bauer sought to reduce considerably the weight of its skates. It launched a project initially known as the “Super Light.” Indeed, Bauer achieved substantial weight reduction. Professional players who tested the Super Light reacted favourably to this feature. That skate, however, was not rigid and durable enough. It also had a tendency to absorb considerable amounts of water. It was never brought to market.
[15] A second project was successful in achieving weight reduction while maintaining or improving other desirable features. It led to the commercialization of the Vapor line of skates. The invention claimed by the ‘748 patent was made in the course of that project. Mr. François Chênevert, who is the named inventor, testified about the various steps of the project. All the aspects of skate design were revisited. Ambitious targets were set with respect to weight, stiffness, durability and other factors. Mr. Chênevert examined a wide variety of potential materials. After doing extensive research, he found a new composite material, composed of laminated Surlyn and monofilament, that was 30%-50% thinner than ballistic nylon, that did not absorb water and that provided the desired degree of stiffness.
[16] In designing the Vapor skate, Mr. Chênevert and his colleagues also wanted to facilitate forward flexion. Among several options, they considered separating the tendon guard from the remainder of the quarter – what became known as the “articulated cuff.” At trial, Mr. Chênevert testified that this led him, almost by chance, to make a prototype in which the two quarters were joined to form a single component (February 5, 2020, pp. 100–101). This was found to provide some additional rigidity and to make skate construction somewhat easier, as the new, more rigid materials were more difficult to sew. In addition, the one-piece construction provided aesthetic advantages that, in Mr. Chênevert’s view, would emphasize the distinctive features of the Vapor skate. The articulated cuff was not retained in the final design. However, after internal debate at Bauer, it was decided to incorporate the one-piece quarter in the new Vapor skate.
[17] Bauer applied for a patent on September 5, 1997. Two patents resulted from Bauer’s application. The first is the ‘748 patent, which is in dispute in this action. The second one is Canadian patent no 2,302,953 [the ‘953 patent], which issued after the application was examined internationally under the Patent Cooperation Treaty and entered the national phase. The claims of the ‘748 patent are directed to a quarter for a lasted skate boot with foxing portions, while the claims of the ‘953 patent are directed to a skate boot comprising a quarter and a tendon guard having certain characteristics.
[18] The ‘953 patent was issued on November 20, 2001. Subsequently, the application that led to the issuance of the ‘748 patent was deemed to be abandoned, but was reinstated in 2003. After examination, the Patent Office objected to certain claims on the ground of obviousness. Bauer responded by joining three claims and making other changes to the application. The ‘748 patent was then issued on August 7, 2007.
[19] The ‘748 patent, which forms the basis of Bauer’s action, is entitled “quarter for skate boot.” Under the heading “background of the invention,” it describes prior art consisting of two separate quarters sewn together. It highlights the manufacturing or durability issues associated with the presence of that sewing line. It also mentions that the tendon guard would overlap with the quarters. Prior art is illustrated by the following figure:
[20] The patent then contains a “statement of the invention” essentially paraphrasing the claims. It continues with a “brief description of the drawings” and a “detailed description of embodiments.” One of the drawings, which is said to provide a “view of a quarter according to the invention,” is as follows:
[21] In this action, Bauer asserts claims 1 and 5 (as dependent on claim 1) of the ‘748 patent. They read as follows:
1. A quarter for a lasted skate boot, said quarter being adapted to encircle the heel and ankle portions of a wearer’s foot, said quarter comprising a quarter medial portion, a quarter lateral portion and a junction line between said medial and lateral portions, wherein said medial and lateral portions are integrally connected at said junction line, wherein said medial and lateral portions extend upwardly along said junction line, and outwardly each side of said junction line along a narrowing profile adapted to a rear shape of the skate boot when folded in U-shape, and wherein each of said medial and lateral portions comprises a foxing portion extending downwardly therefrom.
5. A quarter as defined in any one of claims 1 to 4, wherein said foxing medial and lateral portions are adapted for mutual connection with a sewing line.
[22] Despite some initial problems, the Vapor line of skates was a commercial success. The contribution of the invention described in the ‘748 patent to that success is an issue to which I will return later in these reasons. Nevertheless, it is not in dispute that Bauer’s competitors soon began to make skates with a one-piece quarter, although whether those skates infringe Bauer’s patent is very much in dispute.
[23] Bauer sued one of its competitors for infringement of the ‘953 patent. It was successful both at trial and on appeal: Bauer Hockey Corp v Easton Sports Canada Inc, 2010 FC 361; aff’d 2011 FCA 83 [Easton]. The Easton litigation involved different parties and dealt with a different patent. The judgments in that case do not constitute res judicata with respect to the present case. In spite of this, Bauer repeatedly drew my attention to certain findings of the trial judge in Easton. It would be hazardous to transpose findings made in that case to the present matter because the issues, the evidence and the parties’ theories of the case are not the same. It is easier to explain those differences at the end of these reasons.
D. The Claim and the Trial
[24] Bauer filed its statement of claim against CCM on December 21, 2012. It asserts that a wide range of CCM skates infringe claims 1 and 5 of the ‘748 patent.
[25] It took more than seven years to bring this claim to trial. Some portion, but by no means all, of that delay may be due to Bauer’s restructuring in 2016–17.
[26] At trial, Bauer presented several factual witnesses. Most were current or former employees and were understandably enthusiastic about their brand and the contribution of the invention to the evolution of skate design. Given my reasons for dismissing Bauer’s action, several aspects of their evidence is not directly relevant to the issues I need to address. As a result, I will not engage in a comprehensive description of the evidence given at trial.
[27] Both parties brought forward five expert witnesses, the maximum number allowed under section 7 of the Canada Evidence Act, RSC 1985, c C-5. Some of them addressed financial issues; others focused on patent validity and infringement issues, including common general knowledge, claims construction, anticipation and obviousness. My observation is that when dealing with the latter issues, especially claims construction, experts tend to become indistinguishable from lawyers. Their opinions as to the meaning of the claims are based more on legal principles than common general knowledge, as if the skilled person was more adept at claims construction than at their own art. (See, for a similar observation, Shire Biochem Inc v Canada (Health), 2008 FC 538 at paragraphs 22–23 [Shire].)
[28] Moreover, expert witnesses typically cling very closely to the theory of the case of the party that retained them. They are very well prepared. They know the other party’s theory of the case and they develop techniques to deflect objections and to reassert their own theory. In saying this, I do not wish to launch a philosophical debate as to the possibility of separating expertise and advocacy. I will simply note that one of the experts called by Bauer, Mr. Beaudoin, went far beyond the others in advocating for the party who retained him. Throughout these reasons, I will give several examples of the flaws of his reasoning. The common theme is that he takes advantage of the skate industry’s inconsistent use of terminology to stipulate definitions or meanings that are not grounded in any objective evidence. He then builds a conceptual edifice on those definitions and asserts, again without any objective basis, that the skilled person would share his perspective. In my view, his reports and testimony are more properly viewed as an appendix to the submissions of Bauer’s counsel and should be analyzed as such.
[29] The trial lasted 21 days. Nevertheless, as these reasons will show, the case largely turns upon an issue of claims construction. Claims construction, we are often told, is a question of law, although some forms of evidence are admissible to assist in the process. Where more than 90% of the value of the claim depends on a question of law, the parties should contemplate bringing a motion for summary judgment or summary trial. Had the parties done so in this case, a considerable amount of judicial resources would have been saved, and each party’s legal costs would have been substantially reduced. As 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.
II. Preliminary Issues
[30] It is customary for judgments in patent infringement cases to address certain issues at the outset: the identification of the skilled person, the definition of common general knowledge and the interpretation of the patent claims at issue. I discuss these issues before turning to Bauer’s allegations of infringement and CCM’s allegations of invalidity.
[31] Dealing with these issues at the outset ensures consistency in the analysis. For example, one should not construe a claim in one way for the purposes of validity, and in a different way for the purposes of infringement: Whirlpool Corp v Camco Inc, 2000 SCC 67 at paragraph 49(b), [2000] 2 SCR 1067 [Whirlpool]. Identifying the skilled person and common general knowledge at an early stage of the analysis also provides a basis for determining what, in the relevant field of activity, is considered as inventive. Moreover, addressing issues of claim construction before analyzing validity or infringement prevents claims construction from becoming a “results-oriented” exercise: Whirlpool, at paragraph 49(a).
A. Defining the Person Skilled in the Art
[32] It is generally accepted that patents are not meant to be read by ordinary persons, but rather by a “person skilled in the art or science to which it pertains” (see sections 27(3)(b) and 28.3 of the Patent Act, RSC 1985, c P-4) or, in short, the skilled person: Burton Parsons Chemicals, Inc v Hewlett-Packard (Canada) Ltd, [1976] 1 SCR 555 at 563 [Burton Parsons].
[33] At paragraph 40 of his first report, Mr. Beaudoin, Bauer’s expert, described the skilled person as follows:
I find that the ‘748 patent is directed to a person who has experience in developing or using skate boot patterns in designing a lasted skate boot, and who has experience in the production and manufacturing processes for such skate boots. These individuals likely gained experience by working in the industry with other skilled persons. They may have a combination of both work experience and education; for example, they may have taken courses relating to pattern making and/or industrial manufacturing processes, where such courses were available.
[34] I generally agree with this statement. While CCM’s experts have suggested that the skilled person might actually be a team, nothing really turns on that distinction. In this regard, Mr. Meibock, one of CCM’s experts, writes, at paragraph 136 of his first report:
The 748 Patent does not discuss any particularly advanced technique or cutting-edge material, and therefore the [skilled person] would not need any advanced degree or significant education to understand what is set out in the 748 Patent.
[35] A more controversial question is the scope of the knowledge of the skilled person. I address this issue in the next section.
B. Defining Common General Knowledge
[36] The next preliminary issue is the identification of common general knowledge, which is defined as “knowledge generally known by persons skilled in the relevant art at the relevant time:” Apotex Inc v Sanofi-Synthelabo Canada Inc, 2008 SCC 61 at paragraph 37, [2008] 3 SCR 265 [Sanofi]; see also Bell Helicopter Textron Canada Limitée v Eurocopter, société par actions simplifiée, 2013 FCA 219 at paragraph 65 [Eurocopter]; Mylan Pharmaceuticals ULC v Eli Lilly Canada Inc, 2016 FCA 119 at paragraph 25, [2017] 2 FCR 280 [Mylan]. It is what the skilled person would know without doing research. It must be distinguished from publicly accessible knowledge: not all public knowledge is commonly known. In this case, the relevant time is the date Bauer’s patent was laid open for public inspection, which is March 5, 1999.
[37] The parties put forward markedly contrasting positions as to the sources of the common general knowledge. Bauer contends that the skate industry is entirely separate from the footwear industry. On that view, knowledge related to footwear generally would be irrelevant and would not form part of the skilled person’s knowledge. CCM, in contrast, denies that there is such a separation and argues for a much broader definition of the common general knowledge.
[38] In spite of the apparently unbridgeable gap between them, these positions can be reconciled. As mentioned by a CCM representative in a video that was played at trial (Exhibit X95), skates are a “highly specialized piece of footwear.” Mr. Pearson, who spent a large portion of his career with Bauer, described the skate industry as a “niche market.” These characterizations recognize that skates have a number of features in common with other kinds of footwear, together with certain distinctive features.
[39] Thus, the common general knowledge includes, but is not limited to, knowledge pertaining to pattern-making in the footwear industry generally. It also includes knowledge of the specific issues pertaining to skates and the techniques employed in the skate industry to address those issues.
[40] The evidence belies Bauer’s assertion that general knowledge of the footwear industry is irrelevant to the patent at issue. Several of the witnesses had experience in the general footwear business before beginning employment with Bauer or CCM (Mr. Beaudoin, Mr. Roy, Mr. Nadeau). Upon joining Bauer, Mr. Chênevert learned the art of pattern-making from a Mr. Renaud, who had extensive experience in the shoe industry (February 5, 2020, p. 139), and applied that knowledge to other sewn equipment, such as liners for protective equipment (February 5, 2020, p. 43). Indeed, Mr. Chênevert recognized that the basic principles of pattern-making are the same for all products (February 5, 2020, p. 141). When Mr. Beaudoin mentioned that the skilled person could have taken pattern-making courses, he did not suggest that those courses would only pertain to skates. Given the small number of players in the industry, this would be implausible.
[41] Moreover, the machinery used to make skates is in large part the same as that used for other types of footwear, even though some adaptations may be necessary (Mr. Roy’s testimony, February 24, 2020, p. 65). The Orisol machines that CCM bought in 1997 to automate certain steps of the process were designed and advertised for sewing shoes. Indeed, some of the Asian manufacturers who made skates for CCM also manufactured shoes (Mr. Roy’s testimony, February 24, 2020, pp. 64–65). Bauer itself made shoes until a relatively recent era (Mr. Nadeau’s testimony, February 11, 2020, pp. 7–9, 38–40).
[42] In this regard, an analogy may be drawn to the relationship between intellectual property law and law generally. Intellectual property is a highly specialized body of law with its own legislation, concepts and vocabulary. Practitioners in that field mainly cite authorities from that field. Nevertheless, for many aspects of their practice they rely on legal concepts that are common to all fields of law. For example, there is no separate law of evidence for intellectual property disputes.
[43] Hence, I conclude that the common general knowledge includes basic principles that are common to various forms of footwear, as well as specialized knowledge specific to skates.
[44] For the purposes of these reasons, it is not necessary to provide a comprehensive definition of what a skilled person would know. What is important is that it would include at least knowledge of basic techniques of pattern-making, which are common to various kinds of footwear, as well as basic knowledge of the manufacturing process for skate boots and the specific issues or requirements pertaining to skates.
[45] With respect to pattern-making, certain admissions made by Mr. Beaudoin are particularly relevant to claims construction and the obviousness inquiry (February 17, 2020, pp. 168–171). In cross-examination, he recognized that the concept of a one-piece quarter was known in the shoe industry at the relevant time. A skilled person would also have known, at that time, that a curved heel notch or dart allows the quarter to fit the curved heel shape. That person would also understand how material in the lasting margin could be removed to avoid material build-up under the heel. Mr. Beaudoin also admitted that at the relevant time, a skilled person would have known the various forms of notching or material removal that he describes as categories A, B, C, D and E in his infringement analysis. In particular, the category C dart was described in the 1976 Manual of Shoemaking and in previous patents.
[46] One particular aspect of the common general knowledge in this case is terminological inconsistency. The footwear industry has a common lexicon of terms to describe the main components of shoes and boots (see, e.g., Mr. Meibock’s first report, paragraphs 65–100). However, applying this lexicon to the skates at issue and their manufacturing process is not as straightforward as one might think. Advances in skate design and manufacturing do not generate immediate consensus on the words used to describe them. Moreover, because there are very few players in the skate industry, a different usage tends to develop in each company (see, e.g., Mr. Harvey-Néron’s testimony, February 24, 2020, pp. 82–83). Thus, much caution should be exercised before adopting rigid definitions that do not allow for the evolution of the underlying technology.
C. Claims Construction
[47] As I mentioned earlier, the issue of the proper interpretation to be given to the claims of Bauer’s patent is dispositive of a very large portion of the claim. Given the importance of this issue for the case, it may be useful to begin by a through review of the principles that govern the interpretation of patents, or, as it is commonly known, “claims construction.”
(1) General Principles
[48] Patent claims, like other kinds of legal writings, are interpreted according to the modern method of legal interpretation. Nevertheless, patents are written according to certain specific conventions. They have distinctive characteristics that must be taken into account in the interpretive exercise. I will discuss these similarities and differences briefly before turning to four guidelines that are particularly relevant to this case.
[49] Legal interpretation is not an obscure practice governed by arcane rules. It is, as Lord Hoffmann once famously said, not very different from “the common sense principles by which any serious utterance would be interpreted in ordinary life:” Investors Compensation Scheme v West Bromwich Building Society, [1997] UKHL 28, [1998] 1 All ER 98. These common sense principles are often grouped under the headings of the literal, contextual and purposive methods: Pierre-André Côté, in collaboration with Stéphane Beaulac and Mathieu Devinat, The Interpretation of Legislation in Canada, 4th ed. (Toronto: Carswell, 2011), although other groupings are equally valid: Ruth Sullivan, Statutory Interpretation, 3rd ed. (Toronto: Irwin Law, 2016) [Sullivan, Statutory Interpretation].
[50] Debates about the application of certain technical rules sometimes obscure the usefulness of the basic tools of legal interpretation for the purposes of claims construction: see, for example, Donald H. MacOdrum, Fox on the Canadian Law of Patents, 5th ed (Toronto: Thomson Reuters, looseleaf ed), section 8.3 [MacOdrum, Fox on Patents]. Nevertheless, when the Supreme Court of Canada reviewed the principles of claims construction twenty years ago, it mandated consideration of factors – text, context and purpose – that are the hallmark of the modern method, although it labelled the resulting process the “purposive method:” Whirlpool, especially at paragraph 49(e); Free World Trust v Électro Santé Inc, 2000 SCC 66, [2000] 2 SCR 1024 [Free World Trust].
[51] Beyond features common to all legal writings, certain distinctive characteristics of patents are relevant to the interpretive exercise. First, patents have been described as a “bargain” according to which the inventor makes the invention public in consideration for a limited-term monopoly: Free World Trust, at paragraph 13; Apotex Inc v Wellcome Foundation Ltd, 2002 SCC 77 at paragraph 37, [2002] 4 SCR 153 [Wellcome Foundation]; AstraZeneca Canada Inc v Apotex Inc, 2017 SCC 36 at paragraph 39, [2017] 1 SCR 943 [AstraZeneca]. The process of interpretation must not tilt that bargain; interpretation should be “fair to both patentee and public:” Consolboard Inc v MacMillan Bloedel (Sask) Ltd, [1981] 1 SCR 504 at 520 [Consolboard]. Second, section 27 of the Patent Act, as well as the Patent Rules, SOR/2019-251, set out certain requirements that inventors must comply with when drafting patent applications. Conventions have also developed in this regard: MacOdrum, Fox on Patents, sections 8.8 and 8.9. The interpreter must take into account these rules and conventions.
[52] These features of patents combine to give the interpretive exercise a particular flavour – the search for a claim’s essential elements. In Free World Trust, at paragraph 55, the Supreme Court of Canada confirmed that courts should strive to identify the elements of a claim that cannot be substituted without affecting the working of the invention.
[53] Four particular interpretive issues require consideration in this case: reliance on the disclosure and drawings, reliance on extrinsic evidence, the claims differentiation principle and the principle that the claims are not limited by the disclosed embodiments. I review each of those principles before applying them to the facts of this case.
(a) Reliance on the Disclosure and Drawings
[54] Bauer argues that when interpreting a claim, one should not have recourse to the disclosure and drawings if the language of the claim is clear. It cites a number of precedents which appear to support that proposition, including Dableh v Ontario Hydro, [1996] 3 FC 751 (CA) at paragraph 30, and Monsanto Canada Inc v Schmeiser, 2002 FCA 309 at paragraph 37, [2003] 2 FC 165, to which one could add Mylan, at paragraph 39. At trial, counsel for Bauer also cross-examined CCM’s expert witnesses about the order in which they considered various parts of the patent in reaching their conclusions about claims construction. Bauer argues that their evidence should be rejected, because they did not consider the various parts of the patent in the right order. I reject those submissions, as they are incompatible with the modern method of interpretation.
[55] The modern method aims at helping the interpreter find clues about the meaning of a legal writing. There is no hierarchy of these clues, nor any predetermined order in which they are considered. In particular, the modern method rejects what is known as the “plain meaning rule,” or the idea that if one category of clues – the text – provides a “clear” answer, the other categories of clues are to be disregarded. The Supreme Court of Canada has rejected the plain meaning rule in matters of statutory interpretation (Chieu v Canada (Minister of Citizenship and Immigration), 2002 SCC 3 at paragraph 34, [2002] 1 SCR 84; Montréal (City) v 2952-1366 Québec Inc, 2005 SCC 62 at paragraphs 9–10, [2005] 3 SCR 141; Sullivan, Statutory Interpretation, at 70–72) and contractual interpretation (Sattva Capital Corp v Creston Moly Corp, 2014 SCC 53 at paragraph 47, [2014] 2 SCR 633 [Sattva]; Canada (Attorney General) v Fontaine, 2017 SCC 47 at paragraph 37, [2017] 2 SCR 205).
[56] Indeed, the “plain meaning rule” is absent from the decisions of the Supreme Court of Canada dealing with the interpretation of patents. Instead, as Justice Dickson stated, “[w]e must look to the whole of the disclosure and the claims to ascertain the nature of the invention:” Consolboard, at 520. In Whirlpool, at paragraph 49(e) and (f), Justice Binnie explains that words should be interpreted in light of their context and purpose. He likens claims construction to statutory interpretation and concludes that the “words of the claims” must be “interpreted in the context of the specification as a whole.”
[57] Most recent decisions of the Federal Court of Appeal are in line with this approach. In Tetra Tech EBA Inc v Georgetown Rail Equipment Company, 2019 FCA 203 at paragraph 86 [Tetra Tech], it described the claims construction process without any reference to the “plain meaning rule:”
A Court may look to the whole of the specification to understand what a word or term used in a claim means or to confirm a construction arrived at by consideration of the language of the claims. However, parts of the specification may not be borrowed from to enlarge or contract the scope of the claim as written […].
[58] Likewise, in Tearlab Corp v I-MED Pharma Inc, 2019 FCA 179 at paragraph 33 [Tearlab], it noted that “[c]laim construction requires that the disclosure and the claims be looked at as a whole.”
[59] Nevertheless, the Federal Court of Appeal in Tetra Tech cautioned against an interpretation that would enlarge or narrow the scope of the claim. This admonition is frequently repeated in the case law. Taken too literally, it is illogical. 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:” McLean v British Columbia (Securities Commission), 2013 SCC 67 at paragraph 40, [2013] 3 SCR 895.
(b) Reliance on Extrinsic Evidence
[60] In theory, according to the modern method of interpretation, all information relevant to the interpretive exercise should be considered. Nevertheless, fairness forbids that a legal writing be interpreted according to information unavailable to its addressees. For that reason, exclusionary rules restrict the scope of the evidence that may be used to assist interpretation. In the interpretation of a contract, for example, only information that was known to the parties when entering into the contract may be relied upon: Sattva, at paragraph 58.
[61] Patents are public documents. Their meaning should not depend on information that is not accessible to the public. This explains at least in part the general prohibition on the use of extrinsic evidence to construe patent claims: Free World Trust, at paragraph 61; Whirlpool, at paragraph 49(f). Prohibited extrinsic evidence may include other patents, patent applications and the testimony of the inventor: Bombardier Recreational Products Inc v Arctic Cat, Inc, 2018 FCA 172 at paragraph 51 [Bombardier].
[62] Yet not all forms of extrinsic evidence are prohibited. The notional addressee of a patent is the skilled person. Evidence is admitted regarding the skilled person’s knowledge or the interpretation that the skilled person would have given to the claims. Despite the difficulties mentioned at paragraph [27]
above, experts routinely testify on this topic, even though their evidence is not binding on the court: Whirlpool, at paragraphs 61–62; Eurocopter, at paragraph 74; Tetra Tech, at paragraph 89. The court may also rely on the evidence of lay witnesses who may be considered as “proxies” for the skilled person at the relevant time: Bombardier, at paragraph 35.
[63] One kind of extrinsic evidence that has given rise to heated debate is patent prosecution history, also known in the United States as the “file wrapper.” When the Patent Office examines a patent application, it may find that some claims are invalid. To overcome those objections, the applicant may redraft the claims or make representations as to their proper scope. American courts have admitted evidence of such communications to ensure that patentees do not advance inconsistent positions before the Patent Office and in subsequent litigation. In Canada, the Supreme Court held that prosecution history was inadmissible: Free World Trust, at paragraph 66. However, in 2018, Parliament altered that rule with the enactment of section 53.1 of the Patent Act. Indeed, prosecution history is publicly available and its use is not unfair to the public. Under the new provision, 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.”
[64] There are few cases addressing the application of section 53.1. Like all legislation, it “shall be given such fair, large and liberal construction and interpretation as best ensures the attainment of its objects:” Interpretation Act, RSC 1985, c I-21. The mischief at which section 53.1 is directed is that the patentee was previously allowed to “argue a claim construction that attempts to recapture ground conceded during prosecution of the patent application to avoid prior art:” Pollard Banknote Limited v BABN Technologies Corp, 2016 FC 883 at paragraph 238; see also David Vaver, Intellectual Property Law: Copyright, Patents, Trade-Marks, 2nd ed (Toronto: Irwin Law, 2011) at 348–350. Thus, “[s]ince the introduction of section 53.1, purposive construction requires consideration of not only the claims and the disclosure, but also the substance behind intentional amendments to the claims issued in Canadian patents:” Canmar Foods Ltd v TA Foods Ltd, 2019 FC 1233 at paragraph 71.
[65] Although the use of prosecution history is described in terms of estoppel in the United States, section 53.1 squarely makes this a matter of claims construction. When an issue of claims construction arises, the patentee is always making representations to the Court as to the proper construction of the claims and the defendant is always attempting to rebut those representations. Therefore, in my view, as long as the issue is one of claims construction, section 53.1 applies and the prosecution history is admissible. In other words, there is no need to identify a particular representation and rebuttal every time a reference is made to the prosecution history. It is simply integrated in the interpretive process.
(c) Claims Differentiation
[66] One principle of interpretation that is particularly relevant to this case is the claims differentiation principle, which the Federal Court of Appeal described as follows in Tetra Tech, at paragraph 113:
[…] the principle of claim differentiation presumes that patent claims are drafted so as not to be redundant. Thus, different claims have different scopes. Independent claims are understood to include more than dependent claims; a limitation in the dependent claim should not be read into the independent claim.
[67] This principle is simply an application of the contextual method of interpretation. When looking at context, more specifically the immediate or internal context, we assume that each component of a legal document plays a specific role and that none is redundant: Sullivan, Statutory Interpretation, at 136–138. This principle is illustrated by article 1428 of the Civil Code of Québec, which states that “[a] clause is given a meaning that gives it some effect rather than one that gives it no effect.”
[68] Sections 60–63 of the Patent Rules allow applicants to describe inventions by way of multiple claims. A claim is “dependent” if it includes by reference all the features, or “limitations,” of another claim, as well as additional features. The principle of claims differentiation simply means that the additional feature that distinguishes a dependent claim should not be implied in the independent claim, as that would render the former redundant.
[69