• IP Monitor - Bell Helicopter’s Certified Landing Gear Does Not Infringe Eurocopter’s Patent
  • February 6, 2012 | Authors: Joanne Chriqui; Judith Robinson
  • Law Firm: Norton Rose Canada LLP - Montreal Office
  • 15 of 16 claims of the Eurocopter patent also declared invalid

    On January 30, 2012, Justice Martineau of the Federal Court released his decision in the case of Eurocopter (Société par action simplifiée) v. Bell Helicopter Textron Canada Limitée1, in which Eurocopter claimed infringement of its patent relating to helicopter landing gear. The court invalidated all but one claim of Eurocopter’s patent.  The only landing gear certified and sold for use on Bell Helicopter’s flagship Model 429 helicopter was found not to infringe this surviving patent claim.  The court held that Bell Helicopter’s original prototype sleigh-type landing gear, of which only 21 were made but never certified nor sold, did infringe the only remaining valid claim of the Eurocopter patent.

    In the early 2000s, Bell Helicopter began work on a program to develop a new “clean sheet” helicopter design, which eventually became the Bell Model 429 helicopter.  The original landing gear on the Bell Model 429, referred to by Justice Martineau as the “Legacy Gear,” had a sleigh-type shape. Bell Helicopter’s process to obtain certification of its Model 429 helicopter was interrupted by Eurocopter’s commencement of an action claiming that Bell Helicopter had infringed Eurocopter’s Canadian Patent No. 2,207,787, relating to a sleigh-type skid helicopter landing gear.  Bell Helicopter counterclaimed alleging the invalidity of the Eurocopter patent on several grounds, as well as an entitlement to several defences to infringement, including the regulatory or experimental use exception and the Gillette defence, claiming it was simply practicing the prior art in using the Legacy Gear.

    Immediately after the institution of Eurocopter’s action and becoming aware of the patent, Bell Helicopter engineers set out to redesign the landing gear of its Model 429 helicopter, resulting in what the court referred to as the “Production Gear.”  Bell Helicopter quarantined the 21 Legacy Gears in its possession, which were never sold, pending the outcome of the litigation.  Eurocopter amended its Statement of Claim to allege that Bell Helicopter’s Production Gear also infringed its patent.  Bell Helicopter eventually obtained certification of its Model 429 helicopter, with the Production Gear, which it then sold to customers.

    The Federal Court decision
    Following a lengthy trial involving many fact and expert witnesses, the court refused to accept Eurocopter’s argument that the Production Gear is “simply a slightly modified version of the Legacy Gear that functions in an equivalent manner.”  The court held that the landing gear certified and sold by Bell Helicopter on its Model 429 helicopter, namely the Production Gear, does not infringe the Eurocopter patent.  Bell Helicopter is therefore free to continue all use and sales of its Model 429 helicopter with its existing landing gear.

    In addition, the court held that 15 out of the 16 claims of Eurocopter’s patent were invalid by reason of lack of demonstrated utility (or sound prediction) and overbreadth.  Indeed, the court found that the 15 claims allowing for embodiments whereby the front crosspiece was offset backward in relation to the front ground contact point lacked sound prediction and were overbroad, in light of the promised utility of the patent calling for improvements in relation to load factors, ground resonance and weight.

    The Legacy Gear was found to infringe the only remaining valid claim of the Eurocopter patent.  The court dismissed Bell Helicopter’s arguments of entitlement to the regulatory or experimental use exception in relation to the 21 Legacy Gears that were never sold and in relation to which the certification process was never completed.  The court also dismissed Bell Helicopter’s Gillette defence based on prior art, including art emanating from former Bell Helicopter employees.

    The court refused to entitle Eurocopter to Bell Helicopter’s profits, restricting the plaintiff to its own damages as a result of Bell Helicopter’s use of the 21 original Legacy Gears, the quantum of which will be determined at a later date. Surprisingly, the court permitted Eurocopter to punitive damages. In justifying its award of punitive damages, the court relied on several surprising factual and legal findings, including: inferring Bell Helicopter’s knowledge of the Eurocopter patent despite the unchallenged testimony of senior Bell Helicopter executives to the contrary; drawing a negative inference from the fact that Bell Helicopter resisted the production of privileged documents; and declaring that Bell Helicopter took a “vindictive” position by availing itself of lawfully recognized exceptions to infringement, namely the regulatory or experimental use exception and the Gillette defence.

    1 Eurocopter (Société par action simplifiée) v. Bell Helicopter Textron Canada Limitée, 2012 FC 113.