Friday, September 27, 2013

FCA Affirms Eurocopter: Overview and Claim Construction

Eurocopter v. Bell Helicopter Textron Canada Limitée 2013 FCA 219 Mainville JA: Noël, Trudel JJA aff’g 2012 FC 113 Martineau J
            2,207,787 - new Act

The FCA decision in Eurocopter is most important for its discussion of punitive damages, and it is also significant for its discussion of two doctrines more closely associated with pharmaceutical patents, namely the promise of the patent doctrine and the requirement that the factual basis for sound prediction be disclosed in the patent. I will discuss both of these issues in subsequent posts. For now I will just say that any hopes raised by the FCA’s recent Clopidogrel decision that we might see some retrenchment in respect of the pharmaceutical doctrines (see here and here), must be significantly tempered by the FCA’s Eurocopter analysis. 

This post provides background and discusses the claim construction issues. Anticipation and obviousness were also raised on appeal, but they were dismissed essentially on the basis that the points raised turned on matters of fact on which the trial judge had made no overriding error.

Eurocopter’s patented “sleigh-type” landing gear, is both light and resistant to the dangerous effect known as “ground resonance.” This “Moustache” landing gear has had very large commercial success since its introduction in the mid-1990s [8]. Bell was seeking to expand its line of helicopters into a niche which required sleigh-type landing gear. As Bell had never before designed a helicopter with that type of landing gear, it rented a Eurocopter EC120, which was equipped with the Moustache gear, for a period of four months, during which it studied the landing gear extensively [11, FC 426]. The “Legacy” landing gear initially developed by Bell for its new line of helicopters was a “slavish copy” of Eurocopter’s Mustache landing gear [FC 426]. When Eurocopter learned of the Legacy gear, it brought this infringement action, in 2008. Bell quickly discontinued the Legacy gear, and developed the Production landing gear [15]. The question was whether the ‘787 patent was valid, and whether the Legacy gear or the Production gear infringed. At trial, Martineau J held that the Claim 15, which claimed embodiments in which the front cross piece was offset forward (as shown in the drawing), was valid and infringed by the Legacy gear, but not by the Production gear. The claims which encompassed embodiments in which the front cross piece was offset backwards were held to be invalid for lack of utility. Neither Eurocopter nor Bell had ever built versions with a backwards offset. The bottom line is that claims to the commercially valuable embodiment were valid, but Bell’s Production gear successfully designed around the patent. (Though the non-infringing Production gear was not as good as the infringing Legacy gear [FC 402].) My overview of the trial decision is here.


Claim Construction
As is commonly the case, the question of whether the Production gear infringed turned on claim construction. (It was conceded that the Legacy gear infringed [FC 252].) The claims were to landing gear “characterized in that each of the said skids has at the front an inclined transition zone with double curvature” [87]. The Production hear used what is known as a saddle joint (see illustration). The FCA had no difficulty in upholding Martineau J’s conclusion that a sharp angled saddle joint could not be said to be a “curvature,” as that conclusion was amply supported by the language of the specification and the expert evidence [FC 228, FCA 94]. This led to the question of whether the curvature was an essential element. (Note that Martineau J was more explicit about the separation of the interpretation of the phrase “double curvature” from the essential elements analysis than was the FCA: see [FC 228-29].)

On the essential elements analysis, the FCA described Eurocopter’s argument as follows:

[95] However, Eurocopter’s submissions go far beyond the construction of the claims. It is also of the view that a party can be found to infringe a patent even though it omitted or changed an element that the patent itself identifies as essential. It submits that the invention should be considered and compared, for infringement purposes, from the perspective of its functional equivalence with other landing gears, such as Bell Helicopter’s Production landing gear.

The FCA rejected this “functional equivalency” submission as “incorrect in law” [97], because it “fails to recognize the primacy of the language of the claims in determining the essential elements” [96]. If Eurocopter argued that functionally equivalent embodiment should be considered to infringe despite a finding that the changed elements were essential, then this would indeed be clearly wrong, as it would amount to a reversion to the old “pith and marrow” doctrine. However, the view that functional equivalency should be taken into account in determining whether an element is essential in the first place, is, in my view, entirely in accordance with the the SCC jurisprudence. In particular, the Improver questions, endorsed by the SCC in Free World 2000 SCC 66 [55-56], cited by FCA at [86], consider whether the variant has a material effect on the way the invention works. I understand this to be basically asking whether it is functionally equivalent. With that said, as the FCA noted, the language of the claims does indeed have “primacy,” and in a case such as this were the claim language and the disclosure as a whole emphasized the curvature, it would be difficult to avoid a finding that it was essential. Moreover, as the FCA emphasized, the functional equivalency argument was inconsistent with Martineau J's findings of  fact [98]. In effect, Martineau J did consider functional equivalency, though perhaps not by that name, and he concluded that the Production landing hear does not work the same way as the curvature gear described in the ‘787 patent [FC 245, FCA 100]. Thus Martineau J’s analysis was entirely in accordance with the Free World. (In my comment on this aspect of Martineau J’s decision, I suggested that he had not really considered whether the Production gear worked in the same way, as required by the Improver questions. On re-reading this aspect of his decision, I see that I was wrong about this; my analysis of his decision, and perhaps also of the Improver questions, was overly technical.)

UPDATE: On re-reading this aspect of the Eurocopter FCA decision while writing my post (here) on Valeant v Ranbaxy 2018 FC 847, I realized that I largely missed the point being made by the FCA, particularly when the Court quoted Binnie J’s analogy to a patent for a particular method of growing hair on bald men. While I quibbled above with this aspect of the FCA decision, on re-reading it strikes me as straightforwardly correct. (My policy is not to change blog posts once written, except to correct typos or grammar errors.)

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