FCA Upholds Trial Judge Decision in Eurocopter.

FCA Upholds Trial Judge Decision in Eurocopter.

Bell Helicopter
Textron Canada Limitee v Eurocopter

[2013 FCA 219]


 In the Federal Court decision Eurocopter v Bell Helicopter Textron Canada Limitee [2012
FC 113
] Justice Martineau concluded that:

  • Bell Helicopter had infringed claim 15 of the
    2,207,787 Patent owned by Eurocopter for the ‘Legacy landing gear’
  • That Bell Helicopter had not infringed the ‘787
    patent by using and selling the ‘Production landing gear’
  • Bell Helicopter should be enjoined from
    manufacturing, using or selling the Legacy landing gear
  • That Eurocopter was entitled to damages,
    including punitive, as a result of the infringement
  • That all other claims of the ‘787 Patent were


Bell Helicopter appealed on the basis that claim 15 of
the ‘787 Patent is invalid, that the Legacy landing gear does not infringe the
‘787 Patent and that the finding that punitive damages could be awarded was
inappropriate. Eurocopter cross appealed that all claims of the ‘787 Patent are
valid and that Bell Helicopter’s Production landing gear infringes those


Issues on Appeal

  1. Did the Judge err in construing the common
    general knowledge?
  2. Did the Judge err in construing the claims of
    the ‘787 Patent?
  3. Did the Judge err in finding that the claims of
    the ‘787 Patent were not invalid on the ground of anticipation and in rejecting
    Bell Helicopter’s Gillette defence?
  4. Did the Judge err in finding that claim 15 was
    not invalid on the ground of lack of demonstrated utility or of sound
    prediction? Did he err in finding otherwise with respect to claims 1 to 14 and
  5. Did the Judge err in finding that punitive
    damages could be awarded?


The Common General Knowledge

 In order to set aside this factual finding there must be
a palpable and overriding error.[63] The common general knowledge does not
include all patents – it is limited to knowledge that would generally be known
at the relevant time by practitioners in the field.[64-65]


With respect to expert testimony on the point the Judge
was not required to state which expert he sided with instead he is only
required to show that he was “…seized of the substance of the matter.”[67] Bell
Helicopter is asking for a reassessment of the evidence which is inappropriate
in an appellate review.[71]


Claim Construction

 The Judge did not make a reviewable error when he
construed the claims to require the rear cross piece of the landing gear be
vertical or substantially vertical.[77] The common general knowledge was
correctly used to inform what a person practicing the invention would
understand the claims to mean.[78]


Eurocopter argued that a proper construction of the
patent would be to include the essential elements of the Production landing
gear as well. The Court used a purposive construction approach to correctly
determine this was not the case. The patentee bore the onus of establishing
that an element is non-essential. If the patentee fails to discharge this
burden the Court will revert to the descriptive word or expression for


Eurocopter’s submission that a party can infringe a
patent despite omitting or changing an essential element is inconsistent with
Canadian jurisprudence.[96] Eurocopter’s submitted ‘functional equivalency’
arguments are incorrect in law and ignore the factual findings of the Judge. The
Court rejected Eurocopter’s submissions regarding how the Judge construed the
patent claims.[103]



 Anticipation is a question of mixed fact and law and,
where an error is made in applying the incorrect legal standard or test it may
be characterized as an error of law and reviewed under a standard of


Anticipation may occur by prior publication, oral
communication or use. The only issue for determination in this case was via
prior publication. The documents relied on by Bell Helicopters to demonstrate
anticipation were missing essential elements found in the claims of the ‘787
Patent. There was no error in the Judges reasoning in this respect. [113 – 115]



 Bell Helicopter has the burden of proof with respect to
allegations of obviousness. [116] Obviousness is a question of law and is
reviewed on a standard of correctness. When the inventive concept is not clear
from the patent claims the Judge is entitled to examine the specification.[123]
Once again Bell Helicopters relied upon the above documents properly discarded
by the trial judge.



 Utility raises questions of mixed fact and law which,
absent a palpable and overriding error or an incorrect application of a legal
test, should not be overturned. Utility is evaluated at the time the patent is
applied for. No evidence post filing can be utilized.[131]


The promise of the patent is the standard against which
utility is measured. Utility may either be demonstrated or soundly
predicted.[133] Bell Helicopters alleged that there was no evidence of improved
ground resonance prior to the Canadian filing date. There is no merit to this
submission and it completely ignores the factual findings of the Judge.[136]


Every minute detail need not be tested to demonstrate
utility.[137] Each particular variant depending on the make/model of the
helicopter was not necessary to be tested as the skilled person could modify
the design while maintaining the essential elements.[137] Consequently Bell
Helicopter’s overbreadth submissions also fail.[140]


Validity of claims 1 to 14 and 16

The Judge found that these claims were invalid for lack
of demonstrated utility or sound predicted utility. Eurocopter argued that
these conclusions were based on the Judge ignoring the presumption of validity
set out in s. 43(2) of the Patent Act. Eurocopter submitted that utility of mechanical inventions can be
demonstrated through mathematical calculations and so the doctrine of sound
prediction cannot apply in the field of mechanical inventions. The court
expressly rejects this quoting from the judgment of Justice Binne in Wellcome “Once it is accepted that in
appropriate circumstances utility can be predicted in advance of complete
testing (whether of untested chemical compounds or otherwise), there seems no
reason in principle why the doctrine should not be applied more generally,
depending, of course, on the expert evidence”.[146]


A sound prediction based on common general knowledge and
a sound line of reasoning apparent to a skilled person may satisfy the
disclosure requirements simply by describing the invention in sufficient
detail.[155] Eurocopter failed to disclose sufficient information to enable any
inferences to be drawn. No evidence was provided by Eurocopter that it had
demonstrated or soundly predicted the utility.


In contrast Bell Helicopters submitted evidence that the
inventors had not demonstrated or soundly predicted the promised utility of the


Punitive Damages

 Punitive damages may be awarded in exception cases where
malicious, arbitrary or highly reprehensible misconduct departing from the
ordinary standard is present.[163]


The Judge noted that since the infringement was limited
to the Legacy landing gear which was never sold, the quantum of ordinary
damages would be limited. As a result compensatory damages would not be enough
to achieve the goal of punishment and deterrence.[179] Bell Helicopters was at
best willfully blind to the similarities between their ‘moustache’ landing
skids and the Legacy landing gear. The evidence supported this finding. There
is no reason to overturn the Judges decision in this respect.[186]


The Appeal was dismissed.



 This case stands out on several points. First is that it
turns on the “promise doctrine” the current “doctrine of the month” in Canadian
Patent law which is raising eyebrows around the world. The authors have a
neutral stance in this in that we see the “promise” doctrine as having strong
historical grounding and quite sensible within the broader framework of bargain
theory, but at the same time are noting that it is be treated as a live issue
in Canadian jurisprudence at a significant rate and the phrase itself is being
used in such a way that its historic grounding is somewhat lost. Second is that
punitive damages have traditionally been quite difficult to achieve under
Canadian patent law, but here we see them granted. This contrasts interestingly
with the recent trend to award punitive (treble) damages less frequently in US
patent law.