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Broken promises: Eurocopter v. Bell Helicopter
February 09, 2012
The judgment of Martineau J. in Eurocopter v. Bell Helicopter Textron Canada Limitée, 2012 FC 113, was released recently. It represents a win for Eurocopter in that Bell was found to infringe claim 15 of Canadian Patent no. 2,207,787 (the ‘787 Patent). Much will be made of the fact Martineau J. awarded punitive damages; however, another notable aspect of the decision (even if not affecting the result) is the fact that the bulk of the claims were invalidated based on lack of sound prediction or demonstrated utility.
Pharma patents, particularly selection patents, have been on a losing streak lately in Canada for their failure to live up to the “promise of the patent”. Although they have emerged unscathed from novelty and obviousness attacks, the Achilles’ heel for these patents of late has been a lack of sound prediction; that is, whether the inventors had a reasonable basis for predicting that the claimed invention would fulfil the promises made in the patent application. Eurocopter shows that trend is starting to take hold in non-pharmaceutical patent cases.
Eurocopter involves a helicopter landing gear. Claim 1 (translated from French) reads:
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.
The other relevant claims are claims 15 and 16, which read:
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.
Bell’s landing gear with a forward offset, as claimed in claim 15, looks like this:
After dismissing Bell’s attacks based on anticipation and obviousness, Martineau J. turns to the issue of utility. He notes that the specification outlines the problems with the prior art in the background section and that, “an explicit promise to reduce drawbacks of prior art ‘significantly’ is made by the inventors in the specification”. He finds that the patent promises to solve three specific problems:
(a) Elevated acceleration factors upon landing (load factors);
(b) Difficult frequency adaptation with respect to ground resonance; and
(c) High landing gear weight.
This, he finds, is the “promise of the patent”.
Martineau J. then looks at Bell’s argument that the claims cover embodiments that will not work or, at least, will not fulfil the promises. He finds that on a balance of probabilities Bell hasn’t proven that these embodiments will not work. Nevertheless, Bell did enough to put the issue in question and Eurocopter failed to provide enough evidence to establish that they did have demonstrated utility or a sound prediction as at the Canadian filing date. The only embodiment that was built and tested and that would, at the time of filing, have been known to fulfil the promises in the patent was the embodiment in which the front cross piece was “offset forwards”, as claimed in claim 15. Other embodiments, like that depicted in Figure 11(e) and claimed in claim 16, in which the front cross piece was “offset backwards” were not built or tested at the time of filing. As a result, Martineau J. finds that,
“…there is no particular demonstration in the patent, nor testimonial or documentary evidence that, at the Canadian filing date, the inventors had made and tested a Moustache landing gear whose front cross piece was offset backwards.”
As a result, claims 1 to 14 and 16 were invalidated – not because they covered landing gears that didn’t work, and not necessarily because they covered landing gears that did not deliver the advantages touted in the promise of the patent, but because at the filing date the inventors had not demonstrated, or soundly predicted, that those landing gears would realize the advantages.
Be very mindful of what advantages are promised in your patent application.