Tuesday, March 14, 2017

Experimental Use Exception to Anticipation Applied

Bombardier Recreational Products Inc v Arctic Cat Inc. and Arctic Cat Sales Inc, 2017 FC 207 Roy J
            2,293,106 / 2,485,813 / 2,411,964 / 2,350,264

In Bombardier Recreational Products v Arctic Cat Roy J held that the asserted patents were invalid by reason of insufficiency and ambiguity [572], but all other validity attacks failed, and the patents would have been infringed if valid. Today’s post provides an overview of the case and a few points, the most interesting of which is that Roy J applied the experimental use exception to anticipation. Tomorrow’s post discusses the insufficiency issue.

In the late 1990s, Bombardier Recreational Products (BRP) made a “significant breakthrough” in snowmobile design [415]. Its so-called radical evolution vehicle (REV), introduced in 2002, moved the rider weight forward, so that instead of sitting back as if on a couch, the rider is balanced forward, as if riding a dirt bike [414]. The REV was a great commercial success that left other snowmobile makers “swallowing hard and running fast to catch up” [417]. BRP obtained four patents related to its new design. The three Rider Position Patents (106, 813 and 964), claimed a snowmobile with a rider forward position; the 264 patent, aka the Frame Construction Patent, claimed a new frame design with enhanced rigidity [100]. While it seems that the frame construction claimed by the 264 patent was used in BRPs commercial REVs, the frame construction was not specifically directed at the rider forward position, so that the two groups of patents were quite distinct. Roy J held that the 264 patent was not infringed, in a holding which turned on claim construction [379], [382], but the Rider Position Patents were infringed – or would have been had they been valid. While the patentee fended off attacks based on anticipation [521], obviousness [539-40], and material misrepresentation [574], Roy J held the Rider Position Patents to be invalid for ambiguity and insufficiency [560].

Non-infringement of the Frame Construction Patent turned on standard claim construction issues, so I will say no more about it, in order to focus on the more interesting Rider Position Patents. 

The key point on both infringement and validity was the way in which these patents were drafted. They all claimed a snowmobile comprising all the usual parts, but the key innovation was not described in terms of the structure of the snowmobile itself, but rather in terms of the position of the rider on the snowmobile. For example, Claim 1 of the 106 patent was as follows:

1. A snowmobile, comprising: [standard parts] constructed and arranged such that, when the standard rider is . . . in a biomechanically neutral position . . . the snowmobile has a first center of gravity without the standard rider and a second center of gravity with the standard rider and a distance between a vertical line passing through the first center of gravity and a vertical line passing through the second center of gravity is between 0 cm and 14 cm inclusive.

Since the rider is a significant part of the weight of a snowmobile, and the rider sits behind the center of gravity of the snowmobile itself, the center of gravity of the combination of the rider and sled will be behind the center of gravity of the sled alone. The further back the rider sits, the further back the combined center of gravity will be. By defining a maximum distance between the two, the claim is to a snowmobile constructed such the rider will normally sit in a forward position. As another example, Claim 1 of the 964 patent claims a snowmobile constructed such that, when the rider is in the normal position, “the hips of the standard rider are disposed above its knees.” That is contrasted with the prior art, where the rider was in a more reclined position. Other claims added refinements, such as specifying that the ankles should be behind the knees. The 813 patent was similarly drafted, except it defined the rider position in terms of angles, rather than body parts or centre of gravity. None of the claims specify how the sled should be constructed to achieve this result.

The defendant Arctic Cat raised a number of claim construction issues related to phrases such as a “standard rider,” but Roy J had no difficulty construing these in light of the disclosure, with “a mind willing to understand” [298], and stressing that “common sense is not excluded from the Court room” [299]. In light of the recent debate, it is worth noting that Roy J used a disclosure-first approach rather than a claim-first approach, but this did not appear to have been a point of contention. Very unusually, Roy J also adverted to the prosecution history during claim construction, but this did not have any impact on the claim construction [323].

The claim drafting method came to the fore in determining infringement.“In order to perform measurements that would be compared, it was deemed necessary to follow a protocol which would reflect the three Patents-in-suit” [429], and there questions, for example, as to what position should be taken by the rider to determin the steering, footrest and seating position [430], and to define the “biomechanically neutral” position that was specified in the 106 and 813 patents [431]. BRPs experts were able to follow the definitions provided by the patents, so as to replicate the conditions – down to the drop in height caused by the weight of the rider – to calculate the various centers-of-gravity [432]. Roy J was very impressed with the experts [425], [434], who “had nothing to hide and had excellent expertise” [434]. One further obstacle was that BRP’s experts had only measured 17 of Arctic Cat’s models, while 378 models were alleged to infringe. BRP was nonetheless able to establish that all models infringed [469]. BRPs expert showed that AC’s models fell into nine groupings, with models in each grouping sharing the same overall geometry, and the models that were measured were representative of each group [452-54]. AC’s response was to challenge the validity of the groupings, and rather than offering its own measurements. While the defendants are entitled to adopt this strategy, Roy J was not impressed: “the Defendants take the posture that they should sit back and challenge peripherally groupings that they are capable of reviewing with great precision” [457], and he concluded that AC’s challenge to the groupings was not sufficient to displace BRP’s evidence. (Of course, that is not to suggest that AC’s strategy was unsound, as direct measurements of its own models might have reinforced BRPs conclusions even more forcefully.)

Turning to validity, Roy J held that the Rider Position Patents were not anticipated or obvious [476], and they also survived a few other “last-ditch” attacks [581]. The holding of non-obviousness was straightforward on the facts [536], particularly in view of the “overwhelming” secondary evidence of non-obviousness, such as commercial success [540].

Several of the anticipation arguments similarly turned on the facts. The most interesting anticipation issue was one of the “last-ditch” arguments. Some of the testing of BRPs prototypes was carried out in public or semi-public locations, though precautions, such as riding at night or while shielded between other sleds, were taken to avoid being seen. AC argued that that constituted public disclosure “because someone could have witnessed the rider’s hips above his knees, and the ankles behind the knees, and the hips behind the ankles” [581]. Roy J rejected this argument primarily on the authority of Conway v Ottawa Electric Railway Co., (1904), 8 ExCR 432, 442, which was recently revived in litigation related to YAZ, as discussed here and here. He noted that “Conway would appear to be good law” [492], citing Hughes J in the YAZ litigation, 2014 FC 436. I summarized Hughes J’s decision as holding that “This seemingly establishes a broad experimental use exception to what would otherwise be anticipating disclosure, which applies to any clinical trial, so long as reasonable steps are taken to ensure that the unused tablets are returned.” Roy J went on to apply this law to the facts:

[582] There is not even a suggestion by AC that the use of public trails was anything but for reasonable experimentation. Since at least 1904, our law has recognized the need to experiment in order to bring the invention to perfection [Conway]. This exception was recognised recently by our Court. In this case, the evidence is that BRP was conscious of the need for confidentiality and took steps to ensure it would be protected. The experimentation was necessary in view of the many uses that would be available for that new configuration. Actually, AC did not address at all the well-recognized experimental use exception, making its argument on the sole basis that prototypes were out on public trails and that a passerby would have been able to identify the positioning. In my view, the experimental use exception would suffice to dispose of that argument.

The comment that “BRP was conscious of the need for confidentiality and took steps to ensure it would be protected,” echoes Hughes J’s comment in YAZ [121] that “Bayer took reasonable steps to ensure the confidentiality of the relevant documents and to ensure that unused tablets were returned.” Roy J did go on to hold that even if there was disclosure, it was not enabling, though I am not entirely satisfied with this reasoning on that point, for reasons I will explain in tormorrow’s post. In any event, the experimental use exception to anticipation was clearly the primary basis for his decision. In YAZ, Hughes J had described the exception as long established [119], and in my post I suggested that “ one decision more than a century old is not strong enough authority to say this point is well-established.” Now we have another decision holding that a public disclosure that is necessary for reasonable experimentation will not constitute anticipation if the inventor took reasonable steps to ensure confidentiality. In both YAZ and BRP v Arctic Cat, it was not clear that there was actually enabling disclosure at all, and the true test of this doctrine will come when the disclosure is clearly enabling on the facts, notwithstanding the reasonable efforts to keep it confidential. But for now we can at least say that the rule is increasingly well-established.

No comments:

Post a Comment