1. PATC Module 2 – Infringement/Validity
Claim Construction
Skate Boot Example

2. 1. Claim Construction Example
Bauer Hockey Corp. v. Easton Sports Canada Inc.
2010 FC 361, aff’d 2011 FCA 83
Federal Court’s Construction
of Can. Patent No
“Quarter for Skate Boot”

3. Claim Language Court’s Comments 1. A skate boot comprising
Although the word “lasted” is not found in the claim, the parties are agreed that a posita [person of ordinary skill in the art] would construe the claims to apply to lasted skates as mentioned in the disclosure... The Court, having considered the patent, is satisfied that this is so… [130]
Lasting can be broadly defined as follows: it is the process during which skate boots are shaped when the upper is placed and stretched over a last. A last is a three-dimensional form that has the approximate form of a human foot. [85]

4. Claim Language Court’s Comments a sole,
a front portion for enclosing a wearer’s toes,
a rear portion for enclosing a wearer’s heel and ankle, and
a medial and lateral portion for enclosing the sides of a wearer’s foot,
said rear portion and said medial and lateral portions comprising:
Only two components of the skate boot are essential elements discussed in the ‘953 Patent, namely the quarter and the tendon guard. [150]

5. Claim Language Court’s Comments
a quarter medial portion and a quarter lateral portion
The quarter is a term of the art that appeared to raise no particular disputes in this case. As indicated on p. 5 of the patent, it may be manufactured using different materials. For example, it may be produced with a multi-layer composite comprising fibres, polymers and nylon. The prior art quarter referred to in the disclosure was made of two pieces sewn together and corresponding to the heel and ankle portions of the foot. [151]
It was commonly known to the posita that there were two main types of construction for traditional lasted skates: either with a two-piece quarter going up no higher than above the first eyelet or with a two or three-piece quarter going from the heel to the top of the Achilles tendon at the rear of the boot. [152]

6. Claim Language Court’s Comments
a quarter medial portion and a quarter lateral portion (continued)
Considering this general knowledge, the specific reference to fig. 1… at p. 1, line 11 of the ‘953 Patent should confirm to the posita that one is dealing with the first type of construction where, as mentioned in the disclosure and in claim 1, the quarter only covers the heel and ankle of the wearer. [153]
Otherwise, it would mean that the tendon guard of the invention, which is to be attached side-by-side to the upper edge of the quarter [see discussion below], would, in a CCM Rapide for example, be affixed to the top of the integrated tendon guard in that skate. This would render the invention impractical and meaningless. [154]

7. Claim Language Court’s Comments
integrally connected together in a one piece construction and
A one-piece quarter. [136]
being folded at a symmetry line to form a U-shaped skate boot structure, each said quarter portions extending upwardly along said symmetry line defining a heel and ankle portion of said skate boot structure and extending outwardly from said symmetry line in a narrowing profile for defining both sides of said skate boot structure; and

8. Claim Language Court’s Comments a tendon guard
A separate piece called the tendon guard attached to the one-piece quarter at a junction line. Agreed by parties to be essential. [135] Parties disagree as to the meaning of “tendon guard.” [136]
Generally the expression “tendon guard” would refer to all the pieces in the area of the Achilles tendon. It does not appear that the posita often turned his or her mind to the question of whether a particular layer in that area, over another, would be viewed as the tendon guard. [156]
Generally, this area is in the top portion of the rear of the boot; although in many of the prior art skates the tendon guard started below or at the first eyelet, there appears to be no common understanding as to exactly where it should finish. [157]

9. Claim Language Court’s Comments a tendon guard (continued)
There is no precise common technical definition for the term “tendon guard”. From this evidence, the Court can only make findings as to the general area where it would be found and, to some extent, its function, which are clearly suggested by the term itself – guarding or protecting the Achilles tendon. [162]

10. Claim Language Court’s Comments a tendon guard (continued)
Court also considered the figures in the patent which are there to illustrate and help the understanding of the posita…. First, one notes that the shape of the tendon guard need not be the same as in the prior art (fig. 1 versus fig. 2). However, what is constant is that in figures 2, 3, 4 and 5, the tendon guard of the invention is attached, at junction line 21, directly to the quarter. As to its height, although not limited to what is described in the figures, fig. 4 certainly shows the tendon guard as being attached below the second eyelet. [163]

11. Claim Language Court’s Comments a tendon guard (continued)
With respect to the material used to manufacture the tendon guard, the patent is silent. It was commonly known that tendon guards were often made of materials different from the quarter, although this was not always true. All skate experts recognized that there were prior art examples that were commonly and generally known where the tendon guard was made of the same material as the quarter. The Court does not accept Mr. Hall’s view that once a posita looks at fig. 1 and identifies it as an illustration of the Supreme 5000, one would know that it is a leather-like piece and this would somehow be sufficient to identify the tendon guard in other construction types and, presumably, to exclude from the definition of tendon guard those made of the same material as the quarter, restricting it to a leather or leather-like synthetic polyurethane material. There is simply no such limitation in this patent.

12. Claim Language Court’s Comments a tendon guard (continued)
From all of the above, the Court finds that the term “tendon guard” refers to the piece that is directly attached side-by-side to the quarter which covers the heel and ankle portion of the wearer’s foot, is made of any material and generally covers the area of the Achilles tendon starting anywhere above the ankle cuff. [168]

13. Claim Language Court’s Comments
secured to said quarter medial portion and quarter lateral portion at a junction line
Parties dispute as to whether it is essential that the tendon guard be attached after the quarter has been folded in a U-shape. [136]
The Court understands that a posita would have known, at the relevant time, that one could attach the tendon guard before folding the one-piece quarter into a U-shape or after it has been so shaped without any impact on the invention. At best, as noted by Mr. Beaudoin, the attachment could be made easier once the U-shape has been given to the rigid material of the quarter. [146]

14. Claim Language Court’s Comments in a side-by-side fashion
Parties disagree as to whether the method of attachment of the tendon guard –in a side-by-side fashion – is an essential element. [136]
One expert states that, at the time of publication, it would have been obvious to a posita that whether the tendon guard was attached side-by-side or with a slight overlap would have no impact on the formation of the angular profile or on the rigidity or functionality of the boot. The expert also referred to the fact that side-by-side attachment was not novel in skate construction and the wording found at p. 4 of the disclosure, where it is mentioned that “[f]urthermore, the guard is advantageously disposed side by side with the quarter. This type of joint avoids the formation of any overlapping of the two assembled parts.” This, in his view, describes a preferred embodiment or a variant (line 10 of the same page). [141]

15. Claim Language Court’s Comments in a side-by-side fashion (cont)
Although it is evident that the inventor knew at the time that the tendon guard could be attached in an overlapping fashion, it is also evident that he chose to limit his monopoly to tendon guards attached in a side-by-side fashion at the junction line between the lower edge of the tendon guard and the upper edge of the quarter. [143]

16. Claim Language Court’s Comments
thereby resulting in said rear portion of said skate boot having an angular profile defined by said tendon guard and said quarter medial and lateral portions at said junction line.
An angular profile in the rear portion of the skate boot defined by the tendon guard and the quarter at said junction line. Agreed by parties to be essential. [135]