Canada: Get To The Chopper: Canada's Federal Court Of Appeal Upholds Decision In Bell Helicopter v. Eurocopter

The Federal Court of Appeal (FCA), in Bell Helicopter Textron Canada Limitée v. Eurocopter SAS, affirmed a trial decision that invalidated most of the claims of a patent for failure to meet the promised utility. The FCA also sanctioned the concept of punitive damages for willful patent infringement under Canadian law.


As reported in our February 2012 Blakes Bulletin: Broken Promises – Canadian Patent Claims Don't Fly, the patent in suit was owned by Eurocopter SAS (Eurocopter) and related to an improved helicopter landing gear referred to as "Moustache landing gear" due to its particular geometrical shape. Bell Helicopter Textron Canada Limitée (Bell Helicopter) began developing its own competitive landing gear after the grant of the subject patent to Eurocopter. In the course of development, Bell Helicopter leased a Eurocopter helicopter equipped with the Moustache landing gear and thereafter developed its own "Legacy landing gear". Eurocopter commenced its infringement action in 2008, shortly after becoming aware of Bell Helicopter's Legacy landing gear. Bell Helicopter subsequently redesigned the Legacy landing gear to create the "Production landing gear". The Legacy landing gear was never sold in Canada.

At trial, the Federal Court found 15 of the 16 claims of the patent in suit to be invalid while affirming the validity of the one remaining claim. The Federal Court ruled that Bell Helicopter's Legacy landing gear infringed that claim, but that its Production landing gear did not. As well, the Federal Court found Bell Helicopter's conduct to be so deliberate and outrageous that punitive damages were justified.

Both parties appealed aspects of the trial decision. The FCA dismissed both the appeal and the cross-appeal.

Two key concepts were addressed in both the trial judge's decision and in the FCA's decision: (1) utility and sound prediction; and (2) punitive damages.


Sound prediction applied to the mechanical arts

For a patent to be valid, the invention's usefulness or utility must be established at the time of filing of the patent application. Where utility has not been demonstrated, it may be based on sound prediction of utility. A number of recent decisions by Canadian courts have highlighted the importance of meeting the utility requirement imposed under the Canadian Patent Act. However, prior to the trial decision in this case, the doctrine of sound prediction was invoked almost exclusively for biotechnology and pharmaceutical patents, where the promised utility is often not demonstrable at the time of filing.

The FCA agreed with the trial judge that the doctrine of sound prediction can also apply to the field of mechanical inventions, despite its more restricted historical application in that field. In doing so, the FCA reiterated the test for supporting a reasonable prediction, namely, that:

  • There must be a factual basis for the prediction
  • There must be a sound line of reasoning for inferring the prediction from the factual basis
  • There must be proper disclosure in the patent.

Application to the facts

At trial, the patent in suit was construed to promise the advantage of significantly reducing drawbacks of prior landing gear designs, such as high gear weight, ground resonance, and load factors. The trial judge went on to find that, due to a lack of either demonstrated utility or sound prediction, all but one of the claims were invalid. The FCA agreed with these findings.

One claim of the patent (claim 15) was upheld at trial on the strength of its disclosure, which recited a specific structure together with sufficient test data. On appeal, the FCA was not persuaded by Bell Helicopter's argument that Eurocopter had not undertaken adequate testing regarding the forwardly inclined front cross piece bar to support claim 15. The FCA held that it was not necessary for Eurocopter to test every minute variant of the inclination of the integrated front cross piece which was offset forward in order to establish utility. The FCA agreed with the trial judge that once a skilled person had chosen a design where the front cross piece is offset forward, the person would have no difficulty choosing which inclination will provide the best result, depending on the general design and weight of the structure of the helicopter.


Awarding punitive damages in patent infringement cases

The FCA affirmed that punitive damages may be awarded for the intentional infringement of intellectual property rights and that there is no basis to exclude punitive damages from patent infringement. Prior to the trial judge's decision in this case, Canadian courts had rarely awarded punitive damages in patent infringement actions.

The FCA rejected Bell Helicopter's submission that, for policy reasons, a party who intentionally infringes a patent should be exempt from punitive damages so as to facilitate "the removal of improper monopolies through the challenge of an invalid patent".

Still, the FCA acknowledged that punitive damages "are very much the exception rather than the rule" and should only be resorted to in exceptional circumstances. More specifically, punitive damages are appropriate where a party's conduct has been high-handed, malicious, arbitrary or highly reprehensible, and represents a marked departure from ordinary standards of decent behaviour.

Accordingly, not all cases of infringement will result in, or warrant an award of, punitive damages.

Punitive damages appropriate in this case

A significant aspect of this case was the lack of evidence showing that Bell Helicopter possessed knowledge of Eurocopter's patent prior to the commencement of the litigation. Nonetheless, the trial judge found that it was not plausible that a sophisticated entity such as Bell Helicopter lacked knowledge of Eurocopter's patent, stating that "Bell knew or should have known" of the patent holding of Eurocopter. The FCA agreed with these findings.

Moreover, the FCA noted numerous credibility issues with respect to key aspects of the testimonies of senior officials of Bell Helicopter. Most notably, Bell Helicopter's employees raised concerns early on about the similarities between the Legacy landing gear and the Moustache landing gear, yet nothing was done to alleviate these concerns.

The FCA wrote: "Where a person infringes a patent which it knows to be valid, appropriates the invention as its own, and markets as its own knowing this to be untrue, punitive damages may be awarded when an accounting for profits or compensatory damages would be inadequate to achieve the objective of retribution, deterrence and denunciation of such conduct."

The FCA was of the view that the conduct of Bell Helicopter "must be denounced in a manner that deters similar misconduct in the future and mark's the community's collective condemnation."

Awarding punitive damages before the quantum of general damages is determined

With respect to timing, the FCA held that, as a general rule, the entitlement and quantum of punitive damages should be determined after the quantum of compensatory damages has been established. This was based on the rationale that, for punitive damages to serve their purpose they must be awarded only where compensatory damages are inadequate to achieve the objectives of retribution, deterrence, and denunciation.

However, the FCA held that, in appropriate cases, and depending on the context, it may be possible to determine an entitlement to punitive damages before the exact quantum of compensatory damages has been established. This would be the case where the compensatory damages, though not precisely quantified, would nevertheless likely be insufficient to accomplish the objectives of retribution, deterrence, and denunciation.

The FCA found that this was precisely the situation faced by the trial judge in this case. The infringement of the patent in suit was limited to the Legacy landing gear which was never sold; therefore, the quantum of ordinary damages would likely be minimal and would not achieve the goal of punishment and deterrence.

Effect of the decision on businesses operating in Canada

In the wake of this decision, "sophisticated" companies operating in Canada may be found to possess implied knowledge of their competitor's technology and patent holdings. As such, companies may wish to take steps to ensure that they are not exposed to punitive damages in the event they are sued for patent infringement. In particular, prior to engaging in any activity that may result in infringement of a Canadian patent, businesses should consider conducting patent searches and seeking opinions from their Canadian lawyers with respect to infringement and validity issues.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
14 Nov 2018, Speaking Engagement, Ontario, Canada

Join members of the Blakes Environmental and Enterprise Risk & Crisis Response groups for a discussion of hot topics and trends in Canadian environmental law.

15 Nov 2018, Webinar, Toronto, Canada

Join us for a live webcast with partners from our Employment & Labour and Litigation & Dispute Resolution groups as they discuss employment-related challenges and considerations surrounding the recent legalization of recreational cannabis in Canada.

15 Nov 2018, Webinar, Toronto, Canada

Join us for a live webcast with partners from our Employment & Labour and Litigation & Dispute Resolution groups as they discuss employment-related challenges and considerations surrounding the recent legalization of recreational cannabis in Canada.

Similar Articles
Relevancy Powered by MondaqAI
Bereskin & Parr LLP
Gowling WLG
Blake, Cassels & Graydon LLP
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Bereskin & Parr LLP
Gowling WLG
Blake, Cassels & Graydon LLP
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions