Eurocopter v. Bell Helicopter Textron Canada Limitée

Eurocopter v. Bell Helicopter Textron Canada Limitée
Court (s) Database
Federal Court Decisions
Date
2012-01-30
Neutral citation
2012 FC 113
File numbers
T-737-08
Decision Content
Federal Court
Cour fédérale
Date: 20120130
Docket: T-737-08
Citation: 2012 FC 113
Montréal, Quebec, January 30, 2012
PRESENT: The Honourable Mr. Justice Martineau
BETWEEN:
EUROCOPTER
(SOCIÉTÉ PAR ACTIONS SIMPLIFIÉE)
Plaintiff / Defendant by Counterclaim
and
BELL HELICOPTER TEXTRON CANADA LIMITÉE
Defendant / Plaintiff by Counterclaim
REASONS FOR JUDGMENT AND JUDGMENT
[1] This case is a classic patent infringement/invalidity scenario. Eurocopter alleges that its competitor, Bell Helicopter Textron Canada Limitée (Bell), has infringed Canadian Patent No. 2,207,787 (the ‘787 Patent) which relates to a skid-type landing gear for helicopter. Bell denies that it has infringed the ‘787 Patent, and, in counterclaim, seeks its invalidity.
[2] The Court will begin by referring to the parties (paras 3-4), to the patent at issue (paras 5-14), and to the litigation (paras 15-38). This will be followed by an examination of the legal framework (paras 39-80). After reviewing both the factual and expert evidence (paras 81-153) the Court will also expose the chronology of relevant events (paras 154-184). The Court will then construe the patent at issue (paras 185-249). This will be followed by the Court’s findings with respect to infringement (paras 250-292) and validity (paras 293-376). Finally, declarations and remedies shall be dealt with at the end of the present reasons (paras 377-464).
I. THE PARTIES
[3] Eurocopter, the owner of the ‘787 Patent, has its headquarters at the Aéroport International Marseille/Provence, France. It conducts its business in Canada through Eurocopter Canada Limited; the latter is not a party to these proceedings. Eurocopter is a major player in the civilian and parapublic helicopter market and owns 850 patents that have generated almost 2,500 titles worldwide.
[4] Bell is incorporated under Canadian law, with its principal place of business in Mirabel, Quebec. Its parent company, Bell Helicopter Textron Incorporated (Textron), operates in Fort Worth, Texas; it is wholly owned by Textron Incorporated headquartered in Providence, Rhode Island. Bell encompasses the full spectrum of helicopter research and manufacturing in the civilian and parapublic helicopter market.
II. PATENT AT ISSUE
[5] The ‘787 Patent, entitled “Train d’atterrissage à patins pour hélicoptère” (skid-type landing gear for helicopter) was issued on December 31, 2002 to Eurocopter from an application filed on June 5, 1997, claiming priority based on French patent application No. 96 07158, filed in France on June 10, 1996. The ‘787 Patent will expire on June 5, 2017.
[6] The ‘787 Patent is written in French. That said, a translation of same in English was prepared for the litigation by ALL LANGUAGES LTD. Any difference or ambiguity with respect to the choice of particular words used in the English translation will be touched upon subsequently by the Court, if material to the issues raised by the parties.
[7] Mr. Henri Fernand Louis Barquet, Mr. Pierre Prud’homme Lacroix and Mr. Joseph François Robert Mairou are the named inventors of the landing gear described and claimed in the ‘787 Patent. The disclosed invention is presented as a major innovation in the field of skid-type landing gears for light helicopters. Although not referred to as such in the ‘787 Patent, it has been known colloquially in French as the “train à moustache” and it is designated in English as the “Moustache landing gear”.
[8] The invention disclosed in the ‘787 Patent relates to helicopter landing gear, more particularly intended for light helicopters, comprised of two skids each having a longitudinal ground support surface and connected to a front cross piece and a rear cross piece which are themselves attached to the structure of the aircraft by connecting devices, the rear cross piece being attached by the ends of its descending branches to the rear part of said longitudinal support surfaces.
[9] The landing gear according to the invention disclosed in the ‘787 Patent, of the type described above, is characterized by the fact that each of said skids has, at the front, an inclined transition zone with double curvature orienting itself transversely in relation to said longitudinal ground support surface, above the plane of the latter. In this way, the two transition zones together constitute an integrated front cross piece, offset either forwards or backwards in relation to the front delimitation of the plane of contact of said longitudinal support surfaces of the skids on the ground.
[10] Figure 1 of the ‘787 Patent is an isometric view of an embodiment of the disclosed invention:
[11] As can be seen, in this embodiment, the disclosed invention has a sleigh type of shape and its front cross piece is inclined and offset forward in relation to the front delimitation of plane of contact of the longitudinal support surfaces of the two skids.
[12] The ‘787 Patent is comprised of 16 claims. Claim 1 is the sole independent claim; claims 2 to 16 are dependent claims. In French, they read as follows:
1. Train d’atterrissage pour hélicoptère, comprenant deux patins présentant chacun une plage longitudinale d’appui au sol et reliés à une traverse avant et à une traverse arrière elles-mêmes assujetties à la structure de l’hélicoptère par des organes de liaison, la traverse arrière étant fixée par les extrémités de ses branches descendantes à la partie arrière desdites plages longitudinale d’appui, caractérisé en ce que chacun desdits patins présente à l’avant une zone de transition inclinée à double courbure s’orientant transversalement auxdites plages longitudinales d’appui au sol, au-dessus du plan de ces dernières, les deux zones de transition constituant ensemble, de la sorte, une traverse avant intégrée, décalée par rapport à la délimitation avant du plan de contact des plages longitudinales d’appui des patins sur le sol.
2. Train d’atterrissage selon la revendication 1, caractérisé en ce que l’ensemble des patins et traverses est constitué de tubes d’aluminium.
3. Train d’atterrissage selon la revendication 2, dans lequel l’aluminium desdits tubes se caractérise par une limite égale à environ 75% de la résistance à la rupture, et par un allongement relatif à la rupture au moins égal à 12%.
4. Train d’atterrissage selon la revendication 2 ou 3, caractérisé en ce que l’épaisseur de paroi des tubes constituant lesdites traverses avant et arrière est dégressive entre la partie centrale de la traverse et sa jonction au patin correspondant.
5. Train d’atterrissage selon l’une quelconque des revendications 1 à 4, caractérisé en ce que les extrémités des branches descendantes de la traverse arrière sont fixées auxdites plages longitudinales d’appui des patins par l’intermédiaire de manchons en aluminium.
6. Train d’atterrissage selon l’une quelconque des revendications 1 à 5, caractérisé en ce que ladite traverse avant est constituée de deux demi-branches reliées l’une à l’autre vers le milieu de ladite traverse avant par un moyen de jonction démontable et établissant la continuité de ladite traverse avant en flexion.
7. Train d’atterrissage selon l’une quelconque des revendications 1 à 5, caractérisé en ce que ladite traverse avant est constituée d’une seule branche dont les extrémités sont chacune reliées par un moyen de jonction démontable à la partie avant du patin correspondant, ce moyen de jonction étant disposé entre les deux courbures de la zone de transition concernée.
8. Train d’atterrissage selon la revendication 6 ou 7, caractérisé en ce que lesdits moyens de jonction sont constitués par un système de manchon vissé en aluminium ou par un collier de fixation.
9. Train d’atterrissage selon l’une quelconque des revendications 1 à 8, caractérisé en ce que lesdits organes de liaison entre lesdites traverses avant et arrière et la structure de l’hélicoptère sont du type à frottement contrôlé en rotation, comportant à cet effet deux demi-colliers ou analogues enserrant le tube de la traverse, avec interposition d’un palier de matériau élastique du genre élastomère.
10. Train d’atterrissage selon l’une quelconque des revendications 1 à 9, caractérisé en ce qu’il comporte au moins trois organes de liaison à la structure de l’hélicoptère, dont un assujetti centralement sur l’une desdites traverses et les deux autres assujettis, en étant mutuellement écartés de part et d’autre de l’axe longitudinal du train, sur l’autre traverse.
11. Train d’atterrissage selon l’une quelconque des revendications 1 à 9, caractérisé en ce qu’il comporte quatre organes de liaison à la structure de l’hélicoptère, assujettis deux par deux sur l’une et l’autre traverse, en étant mutuellement écartés de part et d’autre de l’axe longitudinal du train.
12. Train d’atterrissage selon la revendication 11, caractérisé en ce que la traverse avant ou arrière présente, entre deux tronçons de traverse, une interruption dans sa partie centrale, et en ce que lesdits organes de liaison à la structure de l’hélicoptère sont assujettis en tant qu’articulations à rappel élastique aux extrémités desdits tronçons.
13. Train d’atterrissage selon l’une quelconque des revendications 1 à 12, caractérisé en ce que ladite traverse arrière est constituée, pour sa partie avant, d’un tube à profil aérodynamique cintré formant bord d’attaque, ce tube étant prolongé vers l’arrière par un carénage rapporté formant bord de fuite.
14. Train d’atterrissage selon l’une quelconque des revendications 1 à 13, caractérisé en ce que des marchepieds sont fixés sur les lesdites zones de transition inclinées à l’avant des patins, au-dessous des portes d’accès à la cabine, ces marchepieds s’étendant, à partir desdites zones de transition, uniquement vers l’arrière.
15. Train d’atterrissage selon l’une quelconque des revendications 1 à 14, caractérisé en ce que ladite traverse avant intégrée est décalée vers l’avant par rapport à la délimitation avant du plan de contact des plages longitudinales d’appui des patins sur le sol.
16. Train d’atterrissage selon l’une quelconque des revendications 1 à 14, caractérisé en ce que ladite traverse avant intégrée est décalée vers l’arrière par rapport à la délimitation avant du plan de contact des plages longitudinales d’appui des patins sur le sol.
[13] For ease of reference, the translation of claims 1 to 16 prepared by ALL LANGUAGES LTD is reproduced below:
1. Helicopter landing gear, comprising two skids each having a longitudinal ground support surface and connected to a front cross piece and a rear cross piece which are themselves attached to the structure of the helicopter by connecting devices, the rear cross piece being attached by the ends of its descending branches to the rear part of said longitudinal support surfaces, characterized in that each of said skids has at the front an inclined transition zone with double curvature orienting itself transversely in relation to said longitudinal ground support surfaces, above the plane of the latter, the two transition zones together constituting, in this way, an integrated front cross piece, offset in relation to the front delimitation of the plane of contact of the longitudinal support surfaces of the skids on the ground.
2. Landing gear according to claim 1, characterized in that the assembly of skids and cross pieces is made of aluminium tubes.
3. Landing gear according to claim 2, wherein the aluminium of said tubes is characterized by a limit equal to approximately 75% of the fracture strength, and by a relative elongation at fracture at least equal to 12%.
4. Landing gear according to claim 2 or 3, characterized in that the wall thickness of the tubes making up said front and rear cross pieces is degressive between the central part of the cross piece and its junction with the corresponding skid.
5. Landing gear according to any of claims 1 to 4, characterized in that the ends of the descending branches of the rear cross piece are attached to said longitudinal support surfaces of the skids by means of aluminium couplings.
6. Landing gear according to any claims 1 to 5, characterized in that the said front cross piece consists of two half-branches interconnected towards the middle of said front cross piece by a removable junction means and establishing continuity of said front cross piece in bending.
7. Landing gear according to any of claims 1 to 5, characterized in that said front cross piece consists of a single branch whose ends are each connected by a removable junction means to the front part of the corresponding skid, said junction means being arranged between the two curves of the transition zone in question.
8. Landing gear according to claim 6 or 7, characterized in that said junction means consist of a screwed coupling system made of aluminium, or of an attachment collar.
9. Landing gear according to any claims 1 to 8, characterized in that said connecting devices between said front and rear cross pieces and the structure of the helicopter are of the type with controlled friction in rotation, comprising for this purpose two half-collars or similar devices surrounding the tube of the cross piece, with the interposition of a bearing made of elastic metal of the elastomer type.
10. Landing gear according to any of claims 1 to 9, characterized in that it includes at least three devices for connection to the structure of the helicopter, one of them being attached centrally to one of said cross pieces and the other two being attached, while being mutually spaced on either side of the longitudinal axis of the gear, to the other cross piece.
11. Landing gear according to any of claims 1 to 9, characterized in that it includes four devices for connection to the structure of the helicopter, two of them being attached to one and two to the other of the cross pieces, and being mutually spaced on either side of the longitudinal axis of the gear.
12. Landing gear according to claim 11, characterized in that the front or rear cross piece had, between two sections of cross piece, a gap in its central part, and wherein said devices for connection to the structure of the helicopter are attached as articulations with elastic return to the ends of said sections.
13. Landing gear according to any of claims 1 to 12, characterized in that said rear cross piece consists, for its front part, of a bent tube having an aerodynamic profile forming a leading edge, this tube being extended towards the rear by an added fairing forming a trailing edge.
14. Landing gear according to any claims 1 to 13, characterized in that steps are attached to said inclined transition zones at the front of the skids, below the access doors to the cabin, three steps starting from said transition zones and extending only towards the rear.
15. Landing gear according to any claims 1 to 14, characterized in that said integrated front cross piece is offset forwards in relation to the front delimitation of the plane of contact of the longitudinal support surfaces of the skids on the ground.
16. Landing gear according to any of claims 1 to 14, characterized in that said integrated front cross piece is offset backwards in relation to the front delimitation of the plane of contact of the longitudinal support surfaces of the skids on the ground.
[14] As further explained below, Eurocopter alleges that claims 1, 2, 3, 4, 5, 7, 9, 10 and 15 are infringed while Bell alleges that claims 1 to 16 are invalid on a number of grounds.
III. THE LITIGATION
[15] Eurocopter claims infringement of the ‘787 Patent by two distinct models of landing gear associated with the Bell 429 helicopter: the Legacy gear and the Production gear (the gears at issue). Basic facts are not seriously challenged or have otherwise been the object of an agreed statement of facts and admissions.
[16] The 18-volume joint book of exhibits (JB) includes the trial record (vol. 1) and some 540 exhibits which have all been considered by the Court (although not specifically mentioned or discussed in these reasons for judgment). The authenticity and the content of the majority of these exhibits were admitted by the parties, but not for all.
[17] In coming to the findings of fact and law below, the Court has also considered the viva voce testimonies of a number of fact and expert witnesses heard, as well as the additional exhibits (P-1 to P-93 and D-1 to D-76), including the read-ins and experts reports, filed respectively by Eurocopter and Bell during this six week trial in January and February 2011.
[18] Unless otherwise indicated in these reasons for judgment, all objections taken under reserve at trial to questions or documents made by counsel are hereby dismissed, and the Court endorses the arguments made by the opposing counsel without repeating same in these reasons (see transcripts, written argumentation and table of objections with respect to same).
[19] In its action, Eurocopter alleges that the gears at issue infringe claims 1, 2, 3, 4, 5, 7, 9, 10 and 15 of the ‘787 Patent (the claims at issue). Incidentally, Eurocopter also alleges that Bell has made false and misleading statements to the public and its potential purchasers by representing that it had designed, for the first time, a landing gear that has the shape of a sleigh (the Legacy gear) and which is one of the embodiments of the claimed invention.
[20] The gears at issue are large and heavy material objects which could not be physically produced. Exhibits JB-216 and JB-271 faithfully represent the Legacy gear and its components, and JB-243 and drawings found in JB-405, JB-477 and JB-485 faithfully represent the Production gear and its components.
[21] Incidentally, on February 14, 2011, the Court examined the gears at issue in person, as well as the Bell 429 helicopter and other models at the Mirabel facility. The Court was guided in the course of its examination by the oral observations made by the parties’ experts. The whole proceeding was video taped (exhibit C-1) and a transcript was prepared accordingly.
[22] Sometimes identified in the documentation as the “original gear”, the Legacy gear was developed by Bell between 2004 and 2007. It is made of aluminium alloy. Twenty-one Legacy gears were manufactured by Aeronautical Accessories Inc., a related Bell company. The first flight of the Bell 429 equipped with the Legacy gear took place on February 27, 2007. All twenty-one gears have been quarantined since the commencement of the present action on May 9, 2008.
[23] An isometric view of the Legacy gear is reproduced below:
[24] The present action in infringement was commenced in May 2008. Eurocopter did not send a cease and desist letter to Bell. The present action initially included only the Legacy gear. Upon learning of Eurocopter’s lawsuit, Bell rapidly made changes to the Legacy gear, resulting in the development of the Production gear.
[25] An isometric view of the Production gear, which is also made of aluminium, is reproduced below:
[26] On June 9, 2008, Eurocopter amended their statement of claim to include the Production gear.
[27] For Eurocopter, the Legacy gear is nothing more than a simple copy of the patented Moustache landing gear, an embodiment of which is shown at Figure 1 of the ‘787 Patent. As such, all the essential elements mentioned in claims 1, 2, 3, 4, 5, 9, 10 and 15 of the ‘787 Patent are found in the Legacy gear. Eurocopter also claims that the changes made to the Legacy gear, resulting in the Production gear, are merely cosmetic, and that both gears are functionally equivalent. Thus, all claims at issue are also infringed in the case of the Production gear.
[28] Besides seeking the usual declaration of infringement and the issuance of a permanent injunction, Eurocopter also requests that Bell be ordered to remit or destroy any infringing gear, that Eurocopter be permitted by the Court to elect between payment of their damages or an accounting of the profits of Bell, and further seeks punitive damages in the amount of $25,000,000, with pre- and post-judgment interests and costs.
[29] In the case at bar, Bell’s defence to the allegations of infringement of the ‘787 Patent varies, depending on the landing gear at issue.
[30] With respect to the Production gear, while denying any functional equivalence, Bell submits that the changes made after the institution of this action (saddle joint and a small protruding ski in the front of the gear), suffice to dispose of the allegations of infringement of claims 1, 2, 3, 4, 5, 7, 9, 10 and 15 of the ‘787 Patent.
[31] With respect to the Legacy gear, while not challenging that the essential elements of claims 1, 2, 3, 4, 5, 7, 9, 10 and 15 of the ‘787 Patent are present, Bell still denies infringement: (1) Bell was practicing prior art and thus, relies on the Gillette defence; (2) Bell used the Legacy gear for the purposes of obtaining regulatory approval and thus can benefit from section 55.2 of the Patent Act, RSC 1985, c P-4, as amended (the Act).
[32] Bell also denies Eurocopter’s entitlement to equitable remedies and questions the Court’s jurisdiction to decide whether false or misleading representations have been made. Furthermore, Bell counter-attacks by claiming that the ‘787 Patent and claims 1 to 16 thereof are invalid on the basis of anticipation, obviousness, lack of utility or of sound prediction, insufficient specification and lack of best mode, and/or overbreadth.
[33] With respect to utility, Bell makes the following allegations:
(a) The promised utility of the claimed invention across all embodiments was not demonstrated by the inventor at the Canadian filing date;
(b) The inventor could not rely upon a sound prediction of the promised utility across all claimed embodiments;
(c) At the trial, according to the evidence, one or more embodiments included in the claims do not meet the promised utility.
[34] Bell also claims that disclosure is insufficient, namely that the best mode is not indicated: paragraphs 27(3)(b) and (c) of the Act. Moreover, Bell alleges that the claims at issue are overbroad in relation to the disclosed invention.
[35] In defence, Eurocopter relies on the presumption of validity of the issued patent and submits that Bell has not met its burden to prove the lack of utility of the disclosed invention or of one or more embodiments included in the claims. Moreover, Eurocopter submits that as of the Canadian filing date, the evidence clearly establishes that the promised utility has been met and that this is not a case where the inventors are relying on a sound prediction.
[36] Bell’s argument that the Moustache landing gear was anticipated is based on two groups of documents: the NASA documents (JB-201 and JB-202) and the Obstacle strike documents (JB-204, JB-493 and JB-497). It is submitted by Bell that each set of documents discloses all of the elements of claim 1 of the ‘787 Patent, which is denied by Eurocopter who further questions the alleged public character of the NASA documents.
[37] Subsidiarily, Bell submits that there are no differences between the inventive concept of claims 1 and 15 of the ‘787 Patent in light of the Obstacle strike documents, the NASA documents, and other prior art, including the XV-1 (JB-541 page 8235) and the XV-3 (JB-208), as well as several patents and design patents (JB-539, JB-528, JB-529 and JB-532). While denying that same were part of the common general knowledge, Eurocopter sustains that the test for obviousness is not met.
[38] On October 2, 2009, a bifurcation order was rendered to cover the calculation of damages, including punitive damages, and/or profits, suffered by Eurocopter or made by Bell, as a result of the infringement of the ‘787 Patent.
IV. LEGAL FRAMEWORK
[39] Since there is no serious disagreement between the parties with respect to the applicable law in this case, it is more convenient to deal first with legal principles governing the issues of construction, infringement and validity.
[40] The Court’s first step before making any finding with respect to infringement or invalidity is to construe the claims of the patent at issue, so as to properly ascertain the invention and the scope of the monopoly thereby granted. The basic principles laid out by the Supreme Court of Canada in Free World Trust v Électro Santé Inc, [2000] 2 SCR 1024, 2000 SCC 66 (Free World Trust) and Whirlpool Corp v Camco Inc, [2000] 2 SCR 1067, 2000 SCC 67 (Whirlpool), constitute the starting point for any patent construction.
[41] Adherence to the language of the claims in turn promotes both fairness and predictability. The claim language must be read in an informed and purposive way. However, there is no recourse to such vague notions as the "spirit of the invention" to expand it further (Free World, above, at para 31).
[42] While extrinsic evidence as to the inventor’s intention is not admissible when construing patent claims (Free World Trust, above, at para 66), recourse to the specification of the patent is permissible to assist in understanding the terms in the claims. However, this is unnecessary where the words of the claim are plain and unambiguous (Procter & Gamble Co v Beecham Canada Ltd, 61 CPR (2d) 1 at para 24, [1982] FCJ 10).
[43] The claims language will, on a purposive construction, show that some elements of the claimed invention are essential while others are non-essential. An unnecessary or troublesome limitation in the claims is a self-inflicted wound, and the claims cannot be broadened to remove said limitation (Free World Trust, above, at para 51). Nor can claims be read down so as to exclude a construction that would invalidate the patent (ICN Pharmaceuticals Inc v Canada (Patented Medicine Prices Review Board), [1997] 1 FC 32 at 64, [1996] FCJ 1065).
[44] Once the claims of the patent have been construed, the Court’s next task is to determine whether there has, in fact, been infringement of the patent. Very simply, there is infringement if all of the essential elements of a claim are present in the product, but there is no infringement if an essential element is different or omitted; there may still be infringement, however, if non-essential elements are substituted or omitted (Free World Trust, above, at paras 31 and 68). That said, a patent is not infringed merely because a defendant’s product achieves the same result as the patented invention.
[45] The substitutability of non-essential elements derives from an informed interpretation of the language of the claims at the time of publication of the patent. Both the element specified in the claim and the variant not making use of this element must be presented to the POSITA. The patentee bears the burden to establish known and obvious substitutability (Free World Trust, above, at para 55). If the patentee fails to discharge that onus, the descriptive word or expression in the claim is to be considered essential unless the context of the claims language otherwise dictates (Free World Trust, above, at para 57).
[46] The identification of elements as essential or non-essential is made on the basis of the common knowledge of the POSITA to which the patent relates and as of the date the patent is published (Free World Trust, above, at para 31). If the POSITA would have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention, then the variant is outside the claim (Free World Trust, above, at paras 31, 58-60).
[47] It is important to distinguish between “public knowledge” and “common general knowledge” which has a narrower meaning. A piece of public knowledge becomes common general knowledge when it is generally regarded as a good basis for further action by the bulk of those who are engaged in the particular art (Eli Lilly & Co v Apotex Inc, [2009] FCJ 1229 at para 97, 2009 FC 991, aff’d 2010 FCA 240 (Eli Lilly & Co), quoting from General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd, [1972] RPC 457 at 482 and 483 (CA)).
[48] In order to establish whether a piece of information is part of the common general knowledge, the first and most significant step is to verify the source of that information (Eli Lilly & Co, above, at para 100). With the existence of powerful search engines, the distinction between public knowledge and common general knowledge may seem less important in recent times; still, documents that are only available internally may not constitute part of the common general knowledge.
[49] The second step in determining whether a piece of information is part of the common general knowledge is to determine what field this information comes from, and whether this field is relevant to the patent in question. It cannot be assumed that the unimaginative, non-inventive technician skilled in the art would consider art in other fields (Almecon Industries Ltd v Nutron Manufacturing Ltd, [1996] FCJ 240 at para 67 (TD) (QL), 108 FTR 161, aff’d (1997), 72 CPR (3d) 397, leave to appeal to SCC refused, [1997] SCCA 374). There must be some reason, supported by evidence, which would justify a person skilled in the art to look beyond the field at issue (Laboratoires Servier v Apotex Inc, 67 CPR (4th) 241 at para 236, 2008 FC 825, aff’d 75 CPR (4th) 443 (FCA), leave to appeal to the SCC denied (33357) (Laboratoires Servier)).
Gillette defence
[50] Raising a Gillette defence, Bell has alleged that it was practicing prior art in making the Legacy and/or the Production gears. Thus, the Gillette defence is the counterpart to Bell’s counterclaim that the ‘787 Patent is invalid because it is anticipated.
[51] In essence, a patent cannot be infringed if what a defendant is doing has already been disclosed in the prior art: Gillette Safety Razor Co v Anglo-American Trading Co (1913), 30 RPC (2d) 465 (HL); Pfizer Canada Inc v Apotex (2005), 43 CPR (4th) 81 at paras 159-161, 2005 FC 1421; Eli Lilly Canada Inc v Apotex Inc (2009), 75 CPR (4th) 165 at paras 60-64, 2009 FC 320.
[52] Accordingly, whether the Gillette defence is a valid defence in this case will depend on the Court’s analysis and conclusions with respect to anticipation, an issue which is thoroughly examined in the section dealing with anticipation.
Regulatory or experimental defence
[53] In the case at bar, Bell submits that none of the twenty-one Legacy gears made were actually sold to customers. Bell invokes subsection 55.2(1) of the Act, which reads as follows:
55.2 (1) It is not an infringement of a patent for any person to make, construct, use or sell the patented invention solely for uses reasonably related to the development and submission of information required under any law of Canada, a province or a country other than Canada that regulates the manufacture, construction, use or sale of any product.
55.2 (1) Il n’y a pas contrefaçon de brevet lorsque l’utilisation, la fabrication, la construction ou la vente d’une invention brevetée se justifie dans la seule mesure nécessaire à la préparation et à la production du dossier d’information qu’oblige à fournir une loi fédérale, provinciale ou étrangère réglementant la fabrication, la construction, l’utilisation ou la vente d’un produit.
[54] Subsection 55.2(1) of the Act invites the Court to determine whether the patented invention is made, constructed or used “solely for uses reasonably related to the development and subdivision of information required under any law”. There exists a similar jurisprudential exception to infringement, which is that of experimentation; the idea is that producing a patented product is not infringement if it is done for the purposes of experimentation and testing: Micro Chemicals Ltd v Smith Kline & French Inter-American Corp, [1972] SCR 506 and Merck & Co v Apotex Inc, [2006] FCJ 671, 2006 FC 524 (Merck).
[55] While the Legacy gear was used during the certification process of the Bell 429, Eurocopter alleges that it was concurrently used to promote sales of the Bell 429. Thus, Eurocopter submits that the regulatory or experimental exception does not apply in this case.
Utility
[56] For an invention to be patentable, it must be useful (section 2 of the Act), among other statutory requirements. At its most basic, the overarching concept is that, as of the relevant date, there must have been a demonstration of the utility of the invention, or, failing that, a sound prediction of utility based on the information and science available at the time of the prediction. A simple spark of utility is sufficient. In the case at bar, the relevant date for the evaluation of the utility of the Moustache landing gear is the Canadian filing date, namely, June 5, 1997.
[57] At the same time, the patentee benefits from a presumption of validity (subsection 43(2) of the Act). Thus, while the patentee must establish utility or soundly predict the utility of all the embodiments claimed, a defendant alleging lack of utility of the invention and/or the invalidity of the patent on various grounds bears the burden of proof: Laboratoires Servier, above, at paras 268-269; Eli Lilly & Co, above, at para 583.
[58] In Canada, a low standard for utility has been established. It is sufficient that it be new, better, cheaper, or afford a choice; it can include an advantage or a disadvantage that is avoided (Pfizer Canada Ltd v Canada (Minister of Health) (2006), 52 CPR (4th) 241 (FCA) at para 31, 2006 FCA 214). However, one must still ask, as the English Court of Appeal did in Lane-Fox v Kensington [1892], 9 RPC 413 at 417 “useful for what?”
[59] As stated by my colleague Justice Hughes, this is where the concept of “promise” of the patent comes into play: Pfizer Canada Inc et al v Mylan Pharmaceuticals ULC et al, [2011] FCJ 686 at para 211, 2011 FC 547 (Mylan Pharmaceuticals ULC). This is a question of law (Eli Lilly Canada Inc v Novopharm Ltd (2010), 85 CPR (4th) 413 at para 80, 2010 FCA 197 (Eli Lilly v Novopharm). The Court is to look at the specification through the eyes of a POSITA, bearing in mind commercial realities and being neither benevolent nor harsh, in order to determine fairly the true intent (Mylan Pharmaceuticals ULC, above, at para 217).
[60] Ultimately, the question to be determined is whether the patentee had sufficient information upon which to base the promise, as of the date of filing (Eli Lilly Canada v Novopharm, above, at para 81). However, it must be noted that bare speculation, even if it turns out to be correct after the fact, is insufficient to justify a valid patent. This requirement is in keeping with the notion that the public is entitled to accurate and meaningful teaching in exchange for the monopoly created by the Act (Apotex Inc v Wellcome Foundation Ltd, 2002 SCC 77, [2002] 4 SCR 153 at paras 83 and 84, 219 DLR (4th) 660 (Wellcome).
[61] If the patent states that a useful result has in fact been achieved, then that statement is accepted for what it says, subject to challenge in litigation (Pfizer v Novopharm Limited, [2010] FCJ 1200 at paras 80, 82 and 87-88, 2010 FCA 242). Where the patent, however, provides certain information and then, on that basis, predicts a result, that prediction must be “sound” (Mylan Pharmaceuticals ULC, above, at paras 225-226).
[62] The test for sound prediction was set out by the Supreme Court in Wellcome, above, and it states as follows:
1. There must be a factual basis for the prediction;
2. The inventors must have at the date of the patent application in Canada an articulable and sound line of reasoning from which the desired result can be inferred from the factual basis; and
3. There must be proper disclosure.
[63] By its very nature, the doctrine of sound prediction presupposes that the patentee’s work is not complete. Logically, therefore, the promise need not have been met at the date of filing, although it must ultimately be fulfilled (Eli Lilly Canada v Novopharm, above, at para 82).
[64] Even if the promised utility was demonstrated at the Canadian filing date or there was a sound prediction, a patent claim may still be held invalid if it is established at trial that the claim includes embodiments that do not meet the promised utility (Monsanto Co v Canada (Commissioner of Patents), [1979] 2 SCR 1108 at 1122; Lundbeck Canada Inc v Canada (Minister of Health), [2010] FCJ 1504 at para 106, 2010 FCA 320). This is accomplished either by showing that the invention will not work, or it will not do what the specification promises it will do (Consolboard Inc v MacMillan Bloedel (Saskatchewan) Ltd [1981] 1 SCR 504 at 525, (1981), 56 CPR (2d) 145 (Consolboard)).
[65] Finally, as noted by my colleague Justice Hughes in Pfizer Canada Inc v Canada (Minister of Health), 2008 FC 500 at para 95, 326 FTR 88, 167 ACWS (3d) 984, who relied on an excerpt of Professor Blanco White, the concept of utility may overlap with those of insufficiency and misleading representations under subsection 53(1) of the Act (also cited by my colleague Justice Gauthier in Bauer Hockey Corp v Easton Sports Canada Inc, [2010] FCJ 431 at para 288, 2010 FC 361; aff’d 2011 FCA 83 (Bauer)).
Sufficiency of disclosure, misrepresentations and overbreadth
[66] In addition to meeting the tests for patentability, an invention must also be sufficiently disclosed. The specification represents the bargain between the Crown on behalf of the public and the inventor (Consolboard, above, at 517). Accordingly, the patent must contain enough information to allow a POSITA to make the invention.
[67] The claims must be precisely laid out, without being overbroad. If the disclosure requirements are not met, the patent will be invalid even if it is new, useful and not obvious. These requirements for a patent specification are set out in subsections 27(3) and 27(4) of the Act. In the case of a machine, the specification must explain the principle of the machine and the best mode in which the inventor has contemplated the application of that principle (para 27(3)(c) of the Act).
[68] If the inventor omits information in order to retain an advantage, misleads the public, or does not communicate the full scope of his knowledge, the specification is insufficient. That said, in order to invalidate a patent pursuant to subsection 53(1) of the Act, an applicant must first establish that an allegation in the disclosure was untrue, and then, that such allegation was “material” and “wilfully made for the purpose of misleading” (Wellcome, above, at para 94; also cited in Bauer, above, at para 323).
[69] Invalidity of a patent for overbreadth is not mentioned specifically in the Act; it is merely a particular application of the arguments of utility or anticipation. Essentially, the claims are deemed to be overbroad when they include elements not disclosed by the inventor that are not useful or are already present in the prior art.
[70] In the case at bar, Bell claims that disclosure is insufficient and that the best mode is not indicated, and that the claims are otherwise overbroad on the ground of lack of demonstrated utility of some embodiments. Sufficient disclosure is evaluated in function of the date of publication of the patent, namely December 10, 1997. The best mode is evaluated in function of the priority date, namely June 10, 1996. That said, there are no allegation by Bell that the ‘787 Patent is void on the basis of misrepresentations (subsection 53(1) of the Act).
Anticipation and obviousness
[71] Although anticipation and obviousness are both related to the content of the prior art, these are two distinct concepts:
… obviousness is an attack on a patent based on its lack of inventiveness. The attacker says, in effect, “Any fool could have done that.” Anticipation, or lack of novelty, on the other hand, in effect assumes that there has been an invention but asserts that it has been di