On January 30, 2012, the Federal Court released its decision in Eurocopter v. Bell Helicopter Textron Canada Limitée (“Bell”) (2012 FC 113). It held one claim of the patent was valid and infringed. The patent relates to a skid-type landing gear for helicopters.

In the April 4, 2012 edition of IP Report, the significance of the punitive damages awarded by Justice Martineau was discussed. In this follow-up article, we discuss another interesting aspect: the validity challenge relating to utility. While Justice Martineau upheld the patent’s validity, he found several claims invalid for lack of utility.

Significantly, Justice Martineau employed the “promised utility” framework recently developed in pharmaceutical cases in this mechanical context. He began his utility analysis by construing the “promise” of the patent.  

Over the past few years, there has been a departure in pharmaceutical cases from the general principle of “scintilla” of utility. The courts have embarked upon a “construction of the promise of the patent” exercise to almost inevitably find a promise of a result somewhere in the patent’s description. Some decisions have gone so far as to hold patentees to promises implied by the Court. Once a promise has been found, utility is measured against the construed promise including whether the “promised” utility was demonstrated or soundly predicted as of the Canadian filing date.

In construing the promise, Justice Martineau rejected Eurocopter’s assertion that the utility of the patent was simply to provide a working landing gear. He found that there was an explicit promise to reduce drawbacks of prior art “significantly” and found that the patentee had elected to “extol the virtues” of the invention. The promised drawbacks were: (a) elevated acceleration factors upon landing (load factors); (b) difficult frequency adaptation with respect to ground resonance; and (c) high landing gear weight. Interestingly, none of these “promised advantages” are stated in the claims of the patent.  

While agreeing that the patent promised certain advantages, Justice Martineau rejected Bell’s argument that the patent promised specific percentage reductions in the mass of landing gear, the costs of production, and the load factor. The Court noted the importance of distinguishing the promised advantages and the data upon which they are based, and held that an allegation of invalidity based on incorrect data would be one of misrepresentation (which Bell had not alleged), rather than inutility.

While Bell had not proven that the invention was actually useless (in that it would not work or would not meet the promise of the patent), Justice Martineau considered whether the utility of the invention was demonstrated or soundly predicted as of the Canadian filing date. With respect to the landing gear embodiment, where the integrated front piece was offset forwards, Justice Martineau held that the utility was demonstrated on the basis of laboratory tests and one flight test. Claim 15 was construed as being limited to landing gear containing this forward-offset front piece and was thus valid.  

However, the other claims were not so limited. They included a backwards-offset front piece whose utility had not been demonstrated, nor soundly predicted. Specifically, Justice Martineau held that, at the date of filing, the inventors did not have a factual basis to predict that the “offset backwards’’ landing gear would have any advantage over the prior art with respect to ground resonance. Thus, Justice Martineau invalidated all but one claim of the Eurocopter patent on the basis of inutility and/or over breadth.  

Justice Martineau dismissed Bell’s other invalidity allegations which included obviousness, insufficiency and anticipation.  

On obviousness, he applied the factors discussed in the Supreme Court of Canada’s decision Apotex Inc. v. Sanofi-Synthelabo Canada Inc. (2008 SCC 61, [2008] 3 SCR 265) including whether Eurocopter’s patent was ‘obvious to try.’  

On insufficiency, including failing to meet the best mode requirement, Justice Martineau characterized the allegations as “specious.” In doing so, he held that a person of skill in the art, being “open-minded”, “desirous of putting the invention into practice” and cognizant of the common general knowledge, would have no difficulty in performing the invention of the patent.  

On anticipation, Justice Martineau rejected Bell’s “Gillette defence” that it was merely practicing the prior art. 

He also found that the statutory ‘‘regulatory use’’ exception (section 55.2(1), Patent Act) and common law experimental use exception to infringement were not available in this circumstance.  Bell alleged that 20 of the 21 landing gears it had manufactured were used for tests relating to certification. Justice Martineau found that the use of the landing gear was not solely for uses reasonably related to the development and submission of information required by law. Furthermore, it did not qualify for experimental use. Bell had both solicited and received advanced orders for helicopters with the infringing landing gear, for which it had received approximately $6 million in deposits.

Notices of appeal and cross-appeal have been filed in the Federal Court of Appeal (Court File No. A-74-12).