No Specific Prerequisites Before Having Recourse to Prosecution History in Claim Construction

Bauer Hockey Ltd. v. Sport Maska Inc. (CCM Hockey) 2020 FC 624 Grammond J

2,214,748

In this decision, Grammond J held that no valid claims of Bauer’s 748 patent were infringed. The decision turned largely on claim construction and Grammond J noted that if the parties had brought a motion for summary judgment or summary trial “a considerable amount of judicial resources would have been saved, and each party’s legal costs would have been substantially reduced” [29]. This indicates that Manson J is not alone among FC judges in seeing the need for increased use of summary proceedings: see Viiv Healthcare 2020 FC 486 (here) and Canmar 2019 FC 1233 (here). One noteworthy point is Grammond J’s holding that there are no specific requirements that must be triggered before reference to the prosecution history is permissible under s 53.1 [65].

The invention at issue relates to hockey skates. The uppers were traditionally made with two “quarters” that were sewn together. The 748 patent essentially claimed a one-piece quarter. It may seem obvious that the two pieces should be joined together, and this is exactly what Grammond J held [154-58] [184]. Grammond J addressed the “Beloit question” – 'If it was so easy, why was it not done before?' (my paraphrase of Beloit (1986), 8 CPR (3d) 289 (FCA) at 295, quoted at [146]), by noting that it had not been done before because of cost considerations and not because it was not technically feasible [162-65]. Bauer tried to rebut the prima facie obviousness case with arguments based on commercial success, but Grammond J rejected these, explaining that an adequate causal nexus between the commercial success and the invention specified by the claims had not been established [171-79].

On claim construction there has been an on-going debate as to whether recourse to the disclosure is always permissible, or is permissible only if the claim terms are ambiguous. Grammond J came down very firmly in favour of the former position:

[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.”

[55] The modern method [of interpretation] 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.

He noted that “Most recent decisions of the Federal Court of Appeal are in line with this approach,” [57], quoting Tetra Tech 2019 FCA 203 [86] and Tearlab 2019 FCA 179 [33] saying that “[c]laim construction requires that the disclosure and the claims be looked at as a whole.” I am entirely in agreement with Grammond J’s observations in this regard.

Without detracting from this general approach, Grammond J noted that patents have “certain distinctive characteristics” that need to be taken into account [51]. One in particular is reference to the prosecution history under s 53.1 which 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.” In the specific of the modern approach to interpretation, Grammond J held that there are no specific requirements that must be triggered before reference to the prosecution history is permissible (emphasis added):

[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.

Grammond J did have recourse to the prosecution history, but it served only to confirm the interpretation that was plain from the patent itself. This is not very surprising; the examiner made an obviousness objection, the applicant amended the claims to overcome it, and in litigation the patentee sought to reclaim the lost ground [103-06]. This illustrates why recourse to the prosecution history is often likely to be redundant: when the examiner accepts an amendment intended to restrict the scope of the claims, it will not be very surprising that the new language does indeed restrict the scope of the claims.