Tuesday, October 1, 2013

No Sign of Changed Approach to the Promise Doctrine in First Post-Clopidogrel FCA Decision

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

While the promise of the patent doctrine and the requirement that the factual basis for sound prediction be disclosed in the patent are most closely associated with pharmaceutical patents, the FCA Eurocopter decision is significant on both issues, particularly when contrasted with the recent FCA Clopidogrel decision 2012 FCA 186. This post deals with the promise doctrine, while the next will deal with the factual basis issue. An overview of the facts in Eurocopter is provided in my last post.

In Clopidogrel decision, as discussed here, the FCA re-affirmed the promise doctrine, but it also adopted a relatively restrictive approach to construing the promise, emphasizing repeatedly that the promise must be “explicit,” and also noting that it should not be assumed that every patent has a promise. The question remains as to whether this change in tone will generate a real change in practice. Eurocopter is the first FCA decision since Clopidogrel to consider the issue. In Eurocopter the FCA affirmed, with little discussion, a fairly aggressive pre-Clopidogrel style of interpretation of the promise. Since Eurocopter was argued before Clopidogrel was released, this may simply reflect the fact that counsel would not have argued the Clopidogrel requirement for an express promise, and the FCA did not feel inclined to review the trial judge’s construction of the promise on its own initiative. But it is disquieting that the FCA simply accepted Martineau J’s construction, without even reference to the Clopidogrel approach.

While Martineau J’s trial decision was delivered well before Clopidogrel was released (just days before Clopidogrel was argued), Martineau J did hold that an “explicit” promise had been made (see also [215])”

[338] In effect, an explicit promise to reduce drawbacks of prior art “significantly” is made by the inventors in the specification, and more particularly:

(a) Elevated acceleration factors upon landing (load factors);

(b) Difficult frequency adaptation with respect to ground resonance; and

(c) High landing gear weight.

The basis for this conclusion that “In the opening page of the ‘787 Patent, the inventors identify the existing problems to be addressed by the disclosed invention, and then go on to present the objective and the promise of the invention, which is to remedy drawbacks of the prior art” [336, my emphasis]. Here is the passage in question:

L' inconvenient majeur de ce concept réside dans la grande rigidité du systeme, qui se traduit par des facteurs d'acceleration eleves lors des atterrissages, une adaptation en frequence difficile, relativement au phénomène dit de "resonance sol", et un poids de l'atterrisseur assez élevé.

Le but de la présente invention est de remédier à ces inconvénients de la technique antérieure et d'obtenir un train d'atterrissage d'hélicoptère de conception nouvelle permettant de réduire les inconvénients précédents dans des proportions significatives:

In brief, the first quoted paragraph identifies three shortcomings of the prior art which correspond to the features (a)-(c) identified by Martineau J at [338], and the second paragraph states that the "objective" ("but") of the invention is to significantly reduce these shortcomings. Thus, as Martineau J stated explicitly, the "objectives" of the invention were interpreted as promises. Martineau J “rejected any suggestion by Eurocopter’s experts that the utility of the ‘787 Patent is simply to provide a working landing gear. In prior art, the ways of making a working landing gear were already known to a POSITA. What the inventors propose in their patent is a better alternative, indeed, an improvement, to such conventional skid-type landing gears” [337].

Certainly, the inventors' objective was to provide an improved landing gear, but it does not follow that their objectives were promises. Even accepting the promise doctrine, the inventors might have hoped to provide an improved landing gear, but promised only a useful choice of operable landing gear. To equate objectives with promises falls into the pre-Clopidogrel mode of treating any explicit statement as to the attributes of an invention as being a promise, and the FCA in Eurocopter accepted Martineau J’s characterization of the promise without any comment (see eg [142]).  

The claim to the commercially valuable embodiment, with a forward offset front cross piece, was nonetheless held to be valid on the basis that the promise was fulfilled, and this was affirmed by the FCA [139]. The promise doctrine may, however, have been determinative with respect to the utility of the embodiment with a backwards offset front cross piece, which was held to be invalid because there was no evidence of a sound prediction of improved ground resonance [142]. (I say “may have been “ determinative, because there was no express finding as to whether that embodiment was even operable.)

Perhaps we should not read too much into the FCA’s treatment of the promise doctrine. As noted at the outset, Clopidogrel would not have been argued before the FCA, and so it may be that there is nothing more significant at play here than that the FCA was not inclined to deal with an issue that had not been argued. Moreover, the commercially valuable claim was upheld. But the fact remains that the first decision of the FCA since Clopidogrel gives no hint of a changed attitude towards the promise doctrine.

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