FCA Reviews Doctrines of Claim Construction and Sufficient Disclosure

FCA Reviews Doctrines of Claim Construction and Sufficient Disclosure

Bombardier Recreational Products Inc v Arctic Cat, Inc, 2018 FCA 172

In this decision, the Federal Court of Appeal (“FCA”) reviewed the doctrines of claim construction and sufficient disclosure.

Bombardier Recreational Products Inc’s (“BRP”) appeal of the Federal Court’s (“FC”) decision was allowed in part. The FCA concluded that while the FC had not made an overriding and palpable error in its insufficiency of description analysis [95], it did err in its claim construction analysis, construing the expression “engine cradle” too restrictively. [57] The FCA ordered the claim construction matter back to the FC for redetermination. [97]

Background

BRP appealed the decision of the FC dismissing its action for infringement against Arctic Cat Inc (“AC”) with respect to Canadian Patents 2,293,106 (“106 Patent”), 2,485,813 (“813 Patent”), 2,411,964 (“964 Patent”) (collectively referred to as the “Rider Forward Position Patents” or “RFP Patents”). The FC found that AC infringed some claims of each of the RFP Patents; however, the claims were invalid. [1] The FC also dismissed BRP’s action with respect to Canadian Patent 2,350,264 (“264 Patent”), finding that the snowmobiles sold by AC did not include an “engine cradle” within the meaning of the claims, and therefore did not infringe the patent. [2]

The FC concluded that the claims in the RFP Patents were properly construed, were inventive and new, and there was ample evidence that new configurations with a rider forward position “changed the sport and ushered a new era of snowmobile design and thinking”. [9] The FC dismissed the action because it was not satisfied that the RFP Patents contained enough information to enable the person skilled in the art (“POSITA”) to whom it is addressed to practice the invention. [11] With respect to the 264 Patent, the FC construed the term “engine cradle” in the claims as being limited to a particular variety of engine cradle that is “a walled engine cradle”. Since the engines in the AC models at issue did not have walls, they could not be infringing. [12]

The issue before the Federal Court of Appeal (“FCA”) was whether the FC erred in finding that the disclosure in the RFP Patents was insufficient, and if it erred in limiting the ordinary meaning of the term of the art “engine cradle” to the type of engine cradle described in the preferred embodiments section of the 264 Patent. [13]

264 Patent: “Engine cradle”

The FC had to determine the meaning of the term “engine cradle” for the 264 Patent, as all its claims include the language “a frame including a tunnel and an engine cradle forward of the tunnel.” [19] The FC defined the POSITA with respect to the 264 Patent as “a person who has experience in the field of snowmobile design, and mechanical engineering experience or the equivalent experience acquired through many years of experience in the design of snowmobiles.” [25]

The FC concluded that the engine cradle considered by the 264 Patent is a variety that includes walls: “There is no evidence to the contrary. Every indication is to that effect.” [38] The FCA found that the FC construed the expression “engine cradle” too restrictively. The FCA explains that the FC put undue weight on the figures of the 264 Patent, and further added that there was no definition in the disclosure limiting the ordinary term of art, nor is there any inference that can be made from the claims that a walled engine was essential. [43, 53] “Thus, on a correct interpretation of the claims at issue, the engine cradle is not limited to a variety that included walls.” [57]

RFP Patents

The determinative issue concerning the RFP Patents was whether the disclosure sections were insufficient to enable the POSITA to practice the inventions. [76] The FCA notes that the FC understood the approach to use by approaching each patent on its own, but had confused the appropriate test of description: “it was incorrect for the Federal Court to say that the strict test applicable to the description of the invention applied to the question of whether the disclosure was sufficient to teach the POSITA how to practice the invention. A disclosure will still be enabling if it does not require undue efforts.” [77-78] Despite its mistake in identifying a strict test in the description analysis, the FCA noted that the FC ultimately applied the less stringent test. The FCA therefore could not substitute its own assessment of the evidence in this respect. [79-81]

In the end, the FCA was satisfied that the factual conclusions reached by the FC were open to it on the evidentiary record. The FCA was not persuaded that the FC had made a palpable and overriding error in concluding that the POSITA would have to undertake a major research project for each of the RFP Patents because of the lack of sufficient instructions in their respective disclosures. The FCA concluded there was no ground to allow the appeal with respect to the RFP Patents. [95-96]

The FCA allowed the appeal in part, sending the matter concerning the claim construction for the 264 Patent back to the FC. [97]

Commentary

This decision serves as a reminder for patentees that their patents need to have sufficient disclosure to teach the POSITA to practice the invention. If the POSITA needs to undertake a major research project to practice the invention on the basis of the information disclosed in the patent, the courts will find that that there is insufficient description. [81] Patentees should therefore make sure to retain the services of a patent agent who will provide high quality drafting services in order to avoid the same problems BRP faced with its RFP Patents. For more information, please contact a PCK agent or IP lawyer.

Due care