Eurocopter v. Bell Helicopter Textron Canada Ltd., (2012) 404 F.T.R. 193 (FC)

• Judge: Martineau, J.
• Court: Federal Court (Canada)
• Case Date: January 30, 2012
• Jurisdiction: Canada (Federal)
• Citations: (2012), 404 F.T.R. 193 (FC);2012 FC 113

Eurocopter v. Bell Helicopter Textron (2012), 404 F.T.R. 193 (FC)

MLB headnote and full text

Temp. Cite: [2012] F.T.R. TBEd. JA.070

Eurocopter (Société Par Actions Simplifiée)

(plaintiff/defendant by counterclaim) v. Bell Helicopter Textron Canada Limitée (defendant/plaintiff by counterclaim)

(T-737-08; 2012 FC 113)

Indexed As: Eurocopter v. Bell Helicopter Textron Canada Ltd.

Federal Court

Martineau, J.

January 30, 2012.

Summary:

Eurocopter alleged that its competitor, Bell Helicopter Textron Canada Limitée (Bell), had infringed Canadian Patent No. 2,207,787, which related to a skid-type landing gear for helicopters. Eurocopter claimed infringement by two distinct models of landing gear associated with the Bell 429 helicopter: the Legacy gear and the Production gear. Bell denied the infringement and, in counterclaim, alleged that claims 1 to 16 of the patent were invalid on various grounds. Besides seeking a declaration of infringement and a permanent injunction, Eurocopter also requested that Bell be ordered to remit or destroy any infringing gear, that it be permitted to elect between payment of its damages or an accounting of Bell's profits, and further sought punitive damages. Bell sought a declaration of invalidity of the claims held to be invalid.

The Federal Court granted, in part, the infringement action and determined the remedies. Both Eurocopter and Bell were entitled to declarations of validity and infringement (claim 15), and of invalidity and non-infringement (claims 1 to 14, and 16).

Damages - Topic 1318

Exemplary or punitive damages - Patent infringement - [See Patents of Invention - Topic 3821 ].

Equity - Topic 1006

Equitable relief - General - Accounting of profits - [See Patents of Invention - Topic 3102 ].

Patents of Invention - Topic 1605

Grounds of invalidity - Anticipation - Particular patents - Eurocopter alleged that its competitor, Bell Helicopter Textron Canada Limitée (Bell), had infringed Canadian Patent No. 2,207,787 which related to a skid-type landing gear for helicopters - Bell denied infringement and, in counterclaim, alleged that claims 1 to 16 of the patent were invalid on various grounds, including anticipation - Bell's expert's opinion that the patented landing gear was anticipated was based on two groups of documents: the NASA documents (disclosed elements in composite materials, namely dampers for crash landings) and the Obstacle strike documents (related to aircraft and obstacles in the surrounding area) - The Federal Court, in the infringement analysis, had already dismissed the Gillette defence and concluded that neither group of documents satisfied the two-part test for anticipation - Accordingly, Bell's allegation that claims 1 to 16 were deemed invalid on the basis of anticipation was also dismissed - See paragraph 294.

Patents of Invention - Topic 1724

Grounds of invalidity - Lack of utility and operability - Doctrine of sound prediction - Eurocopter alleged that its competitor, Bell Helicopter Textron Canada Limitée (Bell), had infringed Canadian Patent No. 2,207,787 which related to a skid-type landing gear for helicopters - Eurocopter claimed infringement by two distinct models of landing gear associated with the Bell 429 helicopter: the Legacy gear and the Production gear - Bell counter attacked by alleging that claims 1 to 16 of the patent were invalid on various grounds - Bell's most serious attack on validity concerned the alleged lack of demonstrated utility or sound prediction at the Canadian filing date of the patent - The landing gear was notably characterized in that each of the skids had at the front an inclined transition zone with double curvature, constituting an integrated front cross piece, offset either forwards (claim 15) or backwards (claim 16) - The purported advantages of the landing gear were expressed in the form of a comparison with conventional landing gear - The Federal Court found, in light of the promises of the patent, that the utility of an embodiment included in claim 15 (offset forwards) had been demonstrated at the Canadian filing date; however, there was a lack of demonstrated utility or sound prediction with respect to an embodiment included in claim 16 (offset backwards) - The court rejected any suggestion by Eurocopter's experts that the utility of the patent was simply to provide a working landing gear - In effect, an explicit promise to reduce drawbacks of prior art "significantly" was made by the inventors in the specification - That was the promised utility of the disclosed invention - In the end result, the court found that claim 15 was valid and had been infringed by the making and use of the Legacy gear by Bell - See paragraphs 333 to 372.

Patents of Invention - Topic 2888

Infringement of patent - Acts constituting an infringement - Of particular patents - Eurocopter alleged that its competitor, Bell Helicopter Textron Canada Limitée (Bell), had infringed Canadian Patent No. 2,207,787 which related to a skid-type landing gear for helicopters - Eurocopter claimed infringement by two distinct models of landing gear associated with the Bell 429 helicopter: the Legacy gear and the Production gear - The Federal Court stated that, "infringement is to be determined by comparing the models of gear at issue (the Legacy and Production gears) to the claims, and not to Eurocopter's own model (the Moustache landing gear) used on the EC 120 and EC130. The onus of proof to prove infringement resides on Eurocopter exclusively" - See paragraph 250.

Patents of Invention - Topic 2888

Infringement of patent - Acts constituting an infringement - Of particular patents - Eurocopter alleged that its competitor, Bell Helicopter Textron Canada Limitée (Bell), had infringed Canadian Patent No. 2,207,787 which related to a skid-type landing gear for helicopters - Eurocopter claimed infringement by two distinct models of landing gear associated with the Bell 429 helicopter: the Legacy gear and the Production gear - Bell did not dispute the fact that the original landing (Legacy) gear contained all the essential elements of claim 1 of the patent - The question remained whether the modified landing (Production) gear came within the ambit of claim 1 - The Federal Court concluded that the infringement action failed with respect to the Production gear - While Eurocopter argued that Bell certified the Bell 429 helicopter with the Production gear "primarily by qualifying the Production gear as a slightly modified version of the Legacy gear that functions in an equivalent manner", the evidence did not support such an argument - Having compared the Production gear with the patented helicopter landing gear, the court found that not all of the essential elements of claim 1 were present - That sufficed to dismiss the allegation that dependent claims 2, 3, 4, 5, 7, 9, 10 and 15 were also infringed - See paragraphs 251 to 259.

Patents of Invention - Topic 3006

Infringement of patent - Defences - Patent indistinguishable from prior art (Gillette defence) - Eurocopter alleged that its competitor, Bell Helicopter Textron Canada Limitée (Bell), had infringed Canadian Patent No. 2,207,787 which related to a skid-type landing gear for helicopter - Eurocopter claimed infringement by two distinct models of landing gear associated with the Bell 429 helicopter: the Legacy gear and the Production gear - Bell did not dispute the fact that the original landing (Legacy) gear contained all the essential elements of claim 1 of the patent - The issue was whether Bell could defeat the action by raising a defence based on prior art (Gillette defence) - Bell alleged that it was practicing prior art when it designed and manufactured the Legacy gear for the purpose of integrating it to its new flagship helicopter, the Bell 429 - Bell argued that all of the features of the Legacy gear were found in the prior art, namely the Obstacle strike documents (related to aircraft and obstacles in the surrounding area), and that those documents were publicly available - Bell also argued that the Legacy gear was identical, in all material aspects, to the landing gear depicted in the NASA documents (disclosed elements in composite materials, namely dampers for crash landings) - The Federal Court concluded that Bell had failed to prove that the disclosure and the enablement conditions were met in the case of the Obstacle strike documents - Bell had also failed to establish that the NASA documents were publicly available - Moreover, the court was not satisfied that the NASA documents met the two criteria test for anticipation - Bell had not demonstrated that the NASA documents disclosed subject matter which, if performed, would necessarily result in infringement and that the enablement requirement was met - See paragraphs 269 to 292.

Patents of Invention - Topic 3013

Infringement of patent - Defences - Use of patented product related to development and submission of information to government authorities (regulatory use exemptions) - Eurocopter alleged that its competitor, Bell Helicopter Textron Canada Limitée (Bell), had infringed Canadian Patent No. 2,207,787 which related to a skid-type landing gear for helicopters - Eurocopter claimed infringement by two models of landing gear associated with the Bell 429 helicopter, including the Legacy gear - Bell did not dispute that the Legacy contained the essential elements of claim 1 of the patent, but raised a defence based on s. 55.2(1) of the Patent Act (regulatory or experimental exception) - Bell argued that 20 of the 21 Legacy gears manufactured were used for development and testing, in relation to certification of the Bell 429, and that the remaining gear was used for a static display at a trade show - All 21 gears were now in storage - The Federal Court found that Bell did not construct, use or sell the Legacy gear solely for uses reasonably related to the development and submission of information required by law - That was sufficient to render Bell ineligible for the regulatory or common law experimental exception - Bell was just waiting for the certification of the Bell 429 to sell its new helicopter equipped with the Legacy gear - Moreover, soliciting advanced orders, signing agreements with clients and promoting a new model of helicopter with a landing gear at trade shows went beyond what both the Act and the common law intended by the exceptions - See paragraphs 264 to 268.

Patents of Invention - Topic 3102

Infringement of patent - Remedies - Damages or accounting of profits - Eurocopter alleged that its competitor, Bell Helicopter Textron Canada Limitée (Bell), had infringed Canadian Patent No. 2,207,787 which related to a skid-type landing gear for helicopters - The Federal Court found that claim 15 of the patent was valid and had been infringed by the making and use of the Legacy landing gear by Bell - Twenty-one Legacy gears were manufactured or used by Bell between 2005 and 2008 - According to Bell, Eurocopter's damages were minimal - Eurocopter asked that it be allowed to elect between damages or profits - The Federal Court was satisfied that Eurocopter had "clean hands", accepted Eurocopter's evidence of mitigation of damages, found that Eurocopter had good reasons not to serve a cease and desist letter to Bell prior to instituting the present action, and also found that Eurocopter had exhibited no inequitable conduct either before or during trial - However, the complexity of an accounting of profits and other relevant factors weighed heavily against such a remedy in this case - "[T]he extent of infringement compared to the non-infringement activities of Bell, the special circumstances of this case, the complexity of the calculation of profits, the added complexity and length of the proceeding and the absence of clear benefits resulting from an accounting of profits, militate strongly in favour of the Court's discretion to refuse the equitable remedy of an account of profits" - In the end result, the court decided not to permit Eurocopter to elect between an award of damages or an account of profits - The court found that Eurocopter was entitled to general damages, "which may comprise the loss of profits from sales, or perhaps lost royalty payment in the alternative ... This award includes all compensatory damages suffered by Eurocopter" - See paragraphs 406 to 416.

Patents of Invention - Topic 3103

Infringement of patent - Remedies - Injunctive relief - Eurocopter alleged that its competitor, Bell Helicopter Textron Canada Limitée (Bell), had infringed Canadian Patent No. 2,207,787 which related to a skid-type landing gear for helicopters - Eurocopter claimed infringement by two models of landing gear associated with the Bell 429 helicopter, including the Legacy gear - The Federal Court found that claim 15 of the patent was valid and had been infringed by the making and use of the Legacy gear - Section 57 of the Patent Act provided the court with the discretionary power to issue an injunction - Bell submitted that Eurocopter was disentitled to any equitable relief because it had knowledge since 2005 that Bell was developing the Bell 429 and waited until May 2008 to institute the present action; that Eurocopter strategically chose not to send a cease and desist letter to Bell; and the timing of Eurocopter's action was oriented to produce maximum commercial upheaval - Bell also stressed that, following the serving of the action, the only infringement committed had been discontinued and all infringing Legacy gears had been quarantined by Bell - The Federal Court granted an injunction - Having considered any prejudice allegedly suffered by Bell, the court found that the delays were not unreasonable and that the explanations provided by Eurocopter were reasonable - A cease and desist letter was not required by law - Bell itself experienced delays in the development of the Bell 429 - Any prejudice suffered by Bell was minimal in comparison to the prejudice caused to Eurocopter - Eurocopter's representatives had not acted improperly - See paragraphs 397 to 403.

Patents of Invention - Topic 3109

Infringement of patent - Remedies - Order for delivery up or destruction - Eurocopter alleged that its competitor, Bell Helicopter Textron Canada Limitée (Bell), had infringed Canadian Patent No. 2,207,787 which related to a skid-type landing gear for helicopters - Eurocopter claimed infringement by two models of landing gear associated with the Bell 429 helicopter, including the Legacy gear - The Federal Court found that claim 15 of the patent was valid and had been infringed by the making and use of the Legacy gear - Twenty-one Legacy gears were manufactured or used by Bell between 2005 and 2008 - Following the award of an injunction, Bell requested that the destruction order become enforceable within no later than 30 days after final judgment disposing of all appeals, except for one Legacy gear which it might solely use in corresponding litigation against Eurocopter in other jurisdictions - Eurocopter did not object to the request - Accordingly, the court so ordered - See paragraphs 404 and 405.

Patents of Invention - Topic 3790

Infringement actions - Evidence - Onus of proof - [See first Patents of Invention - Topic 2888 ].

Patents of Invention - Topic 3821

Infringement actions - Damages - General - Eurocopter alleged that its competitor, Bell Helicopter Textron Canada Limitée (Bell), had infringed Canadian Patent No. 2,207,787 which related to a skid-type landing gear for helicopters - Eurocopter claimed infringement by two models of landing gear associated with the Bell 429 helicopter, including the Legacy gear - The Federal Court found that claim 15 of the patent was valid and had been infringed by the making and use of the Legacy gear - The issue was whether punitive or exemplary damages should be awarded following the court's finding that the infringing conduct was planned and deliberate, and that same persisted over four years - Bell actively promoted the sales of the Bell 429 equipped with the Legacy gear; had shown no remorse for its behaviour; and took a vindictive position - The court also took into account that the development of a helicopter was a "highly complex and costly endeavour" - Punitive damages were required not only to punish Bell but to deter others - The fact that only 21 Legacy gears were used by or made for Bell "is besides the point and does not take into account the reality of the length of time, the gravity and planification of the infringement. Bell's overall conduct is highly reprehensible and constitutes a callous disregard for the rights of Eurocopter" - The court dismissed Bell's argument that it would be premature to make a determination to award punitive damages (the quantum of damages, profits and punitive damages had been bifurcated) - It made no practical sense to defer judgment on the issue, and was contrary to the best interests of the parties and the administration of justice - See paragraphs 417 to 456.

Patents of Invention - Topic 3827

Infringement actions - Damages - Profits - Accounting - [See Patents of Invention - Topic 3102 ].

Cases Noticed:

Free World Trust v. Electro Santé Inc. et al., [2000] 2 S.C.R. 1024; 263 N.R. 150; 2000 SCC 66, appld. [para. 40].

Whirlpool Corp. et al. v. Camco Inc. et al., [2000] 2 S.C.R. 1067; 263 N.R. 88; 2000 SCC 67, appld. [para. 40].

Procter & Gamble Co. v. Beecham Canada Ltd. and Calgon Interamerican Corp. (1982), 40 N.R. 313; 61 C.P.R.(2d) 1 (F.C.A.), refd to. [para. 42].

ICN Pharmaceuticals Inc. et al. v. Patented Medicine Prices Review Board et al., [1997] 1 F.C. 32; 200 N.R. 376 (F.C.A.), refd to. [para. 43].

Eli Lilly & Co. et al. v. Apotex Inc. (2009), 351 F.T.R. 1; 2009 FC 991, affd. (2010), 409 N.R. 173; 2010 FCA 240, refd to. [para. 47].

General Tire & Rubber Co. v. Firestone Tyre & Rubber Co., [1972] R.P.C. 457 (Eng. C.A.), refd to. [para. 47].

Almecon Industries Ltd. v. Nutron Manufacturing Ltd. (1996), 108 F.T.R. 161 (T.D.), affd. (1997), 209 N.R. 387; 72 C.P.R.(3d) 397 (F.C.A.), leave to appeal refused (1997), 224 N.R. 157 (S.C.C.), refd to. [para. 49].

Laboratoires Servier et al. v. Apotex Inc. et al. (2008), 332 F.T.R. 193; 67 C.P.R.(4th) 241; 2008 FC 825, affd. (2009), 392 N.R. 96; 75 C.P.R.(4th) 443, leave to appeal denied (2010), 405 N.R. 400 (S.C.C.), refd to. [para. 49].

Gillette Safety Razor Co. v. Anglo-American Trading Co. (1913), 30 R.P.C.(2d) 465 (H.L.), refd to. [para. 51].

Pfizer Canada Inc. et al. v. Apotex Inc. et al. (2005), 282 F.T.R. 8; 43 C.P.R.(4th) 81; 2005 FC 1421, refd to. [para. 51].

Eli Lilly Canada Inc. v. Apotex Inc. et al. (2009), 346 F.T.R. 78; 75 C.P.R.(4th) 165; 2009 FC 320, refd to. [para. 51].

Micro Chemicals Ltd. v. Smith, Kline & French Inter-American Corp., [1972] S.C.R. 506, refd to. [para. 54].

Merck & Co. et al. v. Apotex Inc. (2006), 282 F.T.R. 161; 2006 FC 524, refd to. [para. 54].

Pfizer Canada Inc. et al. v. Canada (Minister of Health) et al. (2006), 351 N.R. 189; 52 C.P.R.(4th) 241; 2006 FCA 214, refd to. [para. 58].

Lane-Fox v. Kensington, [1892] 9 R.PC. 413 (Eng. C.A.), refd to. [para. 58].

Pfizer Canada Inc. et al. v. Mylan Pharmaceuticals ULC et al. (2011), 394 F.T.R. 1; 2011 FC 547, refd to. [para. 59].

Eli Lilly Canada Inc. et al. v. Novopharm Ltd. (2010), 405 N.R. 1; 85 C.P.R.(4th) 413; 2010 FCA 197, refd to. [para. 59].

Apotex Inc. and Novopharm Ltd. v. Wellcome Foundation Ltd., [2002] 4 S.C.R. 153; 296 N.R. 130; 219 D.L.R.(4th) 660; 2002 SCC 77, refd to. [para. 60].

Pfizer Canada Inc. et al. v. Novopharm Ltd. et al. (2010), 408 N.R. 166; 2010 FCA 242, refd to. [para. 61].

Monsanto Co. v. Commissioner of Patents, [1979] 2 S.C.R. 1108; 28 N.R. 181, refd to. [para. 64].

Lundbeck Canada Inc. v. Canada (Minister of Health) et al. (2010), 409 N.R. 322; 2010 FCA 320, refd to. [para. 64].

Consolboard Inc. v. MacMillan Bloedel (Sask.) Ltd., [1981] 1 S.C.R. 504; 35 N.R. 390; 56 C.P.R.(2d) 145, refd to. [para. 64].

Pfizer Canada Inc. et al. v. Canada (Minister of Health) et al. (2008), 326 F.T.R. 88; 167 A.C.W.S.(3d) 984; 2008 FC 500, refd to. [para. 65].

Bauer Hockey Corp. et al. v. Easton Sports Canada Inc. (2010), 366 F.T.R. 242; 2010 FC 361, affd. (2011), 414 N.R. 69; 2011 FCA 83, refd to. [para. 65].

Beloit Canada Ltd. v. Valmet Oy (1986), 64 N.R. 287; 8 C.P.R.(3d) 289 (F.C.A.), refd to. [para. 71].

Sanofi-Synthelabo Canada Inc. et al. v. Apotex Inc. et al., [2008] 3 S.C.R. 265; 381 N.R. 125; 2008 SCC 61, appld. [para. 74].

ratiopharm inc. v. Pfizer Ltd. (2009), 350 F.T.R. 250; 76 C.P.R.(4th) 241; 2009 FC 711, refd to. [para. 75].

Créations 2000 Inc. et al. v. Canper Industrial Products Ltd. et al. (1990), 124 N.R. 161; 34 C.P.R.(3d) 178 (F.C.A.), refd to. [para. 76].

Sanofi-Aventis Canada Inc. et al. v. Apotex Inc. (2009), 350 F.T.R. 165; 77 C.P.R.(4th) 99; 2009 FC 676, refd to. [para. 79].

Pfizer Canada Inc. et al. v. Apotex Inc. et al. (2007), 319 F.T.R. 48; 61 C.P.R.(4th) 305; 2007 FC 971, refd to. [para. 80].

Monsanto Canada Inc. et al. v. Schmeiser et al., [2004] 1 S.C.R. 902; 320 N.R. 201, refd to. [para. 390].

Janssen-Ortho Inc. et al. v. Novopharm Ltd. (2006), 301 F.T.R. 166; 57 C.P.R.(4th) 58 2006 FC 1234, affd. (2007), 366 N.R. 290; 2007 FCA 217; 59 C.P.R.(4th) 116, leave to appeal refused (2007), 383 N.R. 397 (S.C.C.), refd to. [para. 397].

Weatherford Canada Ltd. et al. v. Corlac Inc. et al. (2010), 370 F.T.R. 54; 2010 FC 602, refd to. [para. 397].

Sandvik, A.B. v. Windsor Machine Ltd. and Stihl Chain Saw (Canada) Ltd. (1986), 2 F.T.R. 81; 8 C.P.R.(3d) 433 (T.D.), refd to. [para. 401].

Merck & Co. et al. v. Apotex Inc. et al. (2010), 381 F.T.R. 162; 2010 FC 1265, refd to. [para. 411].

Lubrizol Corp. v. Imperial Oil Ltd., [1997] 2 F.C. 3; 206 N.R. 136 (F.C.A.), refd to. [para. 413].

Celanese International Corp. v. BP Chemicals Ltd., [1999] R.P.C. 203 (Pat. Ct.), refd to. [para. 413].

Lubrizol Corp. et al. v. Imperial Oil Ltd. et al. (1996), 197 N.R. 241 (F.C.A.), refd to. [para. 419].

Whiten v. Pilot Insurance Co. et al., [2002] 1 S.C.R. 595; 283 N.R. 1; 156 O.A.C. 201, refd to. [para. 420].

Hill v. Church of Scientology of Toronto and Manning, [1995] 2 S.C.R. 1130; 184 N.R. 1; 84 O.A.C. 1, refd to. [para. 420].

Microsoft Corp. v. 9038-3746 Quebec Inc. et al. (2006), 305 F.T.R. 69; 2006 FC 1509, refd to. [para. 421].

Louis Vuitton Malletier S.A. et al. v. Yang et al., [2007] F.T.R. Uned. 803; 2007 FC 1179, refd to. [para. 421].

Louis Vuitton Malletier S.A. et al. v. 486353 B.C. Ltd. et al., [2008] B.C.T.C. Uned. 454; 2008 BCSC 799, refd to. [para 421].

Microsoft Corp. v. PC Village Co. et al. (2009), 345 F.T.R. 57; 2009 FC 401, refd to. [para. 421].

Robinson v. Films Cinar inc., 2009 QCCS 3793, varied, 2011 QCCA 1361, refd to. [para. 421].

Apotex Inc. v. Merck & Co. et al. (2003), 307 N.R. 364; 2003 FCA 291, dist. [para. 444].

Authors and Works Noticed:

Fox, Harold G., Canadian Patent Law and Practice (4th Ed. 1969), p. 487 [para. 397].

Siebrasse, Norman, A Remedial Benefit-Based Approach to the Innocent-User Problem in the Patenting of Higher Life Forms (2004), 20 C.I.P.R. 79, generally [para. 413].

Vaver, David, Intellectual Property Law (2nd Ed. 2011) p. 618 [para. 397].

Counsel:

Marek Nitoslawski, Julie Desrosiers, David Turgeon, Chloé Latulippe and Joanie Lapalme, for the plaintiff/defendant by counterclaim;

Judith Robinson, Joanne Chriqui, for the defendant/plaintiff by counterclaim.

Solicitors of Record:

Fasken Martineau Dumoulin S.e.n.c.r.l; Montreal, Quebec, for the plaintiff/defendant by counterclaim;

Norton Rose, Montreal, Quebec, for the defendant/plaintiff by counterclaim.

The trial of this action and counterclaim was held at Montreal, Quebec, on various dates in January and February, 2011, before Martineau, J., of the Federal Court, who delivered the following reasons for judgment and judgment, dated January 30, 2012.