On September 24, 2013, the Federal Court of Appeal rendered its
decision in the appeal and cross-appeal of Justice Martineau's
decision in Eurocopter v. Bell Helicopter Textron Canada
Ltée. Before the Court of Appeal, Bell Helicopter
contended that the trial judge had made numerous errors of law and
fact in finding that Eurocopter's patent claim covering
helicopter landing gear was valid. Further, Bell Helicopter
argued that the trial judge ought not to have awarded punitive
damages. Eurocopter cross-appealed the trial judge's finding
that all but one claim of its patent were invalid for
While the Court of Appeal dismissed the appeal and cross-appeal,
its comments with respect to the issue of utility are of particular
interest as they dealt with the often controversial doctrine of
sound prediction. After rejecting Eurocopter's argument that
this doctrine only applied to certain areas of technology (such as
pharmaceuticals), Justice Mainville went on to consider the
disclosure requirement for sound prediction.
Justice Mainville held that the degree of disclosure required of
the factual basis and line of reasoning depended on the knowledge
of the skilled person. If the factual basis and line of reasoning
can be found in accepted scientific laws, principles or information
that form part of the common general knowledge, then they need not
be disclosed. In other words:
... where the sound prediction is
based on knowledge forming part of the common general knowledge and
on a line of reasoning which would be apparent to the skilled
person ... the requirements of disclosure may readily be met by
simply describing the invention in sufficient detail such that it
can be practised.
Many patent holders will view this approach as a welcome
departure from previous decisions of the Federal Courts, which had
applied a much more rigid test for disclosure. Further, it is
consistent with the way in which a patent is to be read for other
purposes, namely, by the skilled person in light of the knowledge
that they possess.
As a final point of interest, the Court
upheld the trial judge's award of punitive damages against Bell
Helicopter. However, in doing so, it confirmed that punitive
damages remain the exception rather than the rule, even in cases of
intentional infringement. The Court held that the guiding
principle, as previously noted by the Supreme Court of Canada, is
that punitive damages may be awarded when an accounting for profits
or compensatory damages would be inadequate to achieve the
objectives of retribution, deterrence and denunciation of such
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