Canada: Federal Court Of Appeal Upholds Mechanical Sound Prediction And Punitive Damages Decision

Last Updated: October 11 2013
Article by R. Scott MacKendrick and Jerry Z. Chen

In Bell Helicopter Textron Canada Limitée v. Eurocopter SAS, the Federal Court of Appeal affirmed the decision of the Federal Court on all issues, including functional equivalence, sound prediction and punitive damages. The 2012 decision of Justice Martineau of the Federal Court had drawn the attention of commentators with the application of the sound prediction doctrine to a mechanical patent, and also with the awarding of punitive damages in, as reported in our colleague's June 2012 article, a seemingly "run-of-the-mill" patent infringement case.

Background

Eurocopter filed an action in the Federal Court against Bell Helicopter claiming infringement of its helicopter landing gear patent. Justice Martineau found all but one of the claims of the Eurocopter patent to be invalid on grounds including lack of utility and sound prediction. He, however, found that the remaining claim was infringed by Bell Helicopter's Legacy landing gear, but not its newer Production landing gear. He also awarded punitive damages on the basis that Bell exhibited "deliberate and outrageous conduct".

The Federal Court Of Appeal Decision

In dismissing both an appeal and cross-appeal of Justice Martineau's decision, the Federal Court of Appeal made a number of important statements regarding functional equivalence and claim construction, sound prediction and utility, and punitive damages in patent cases.

Functional Equivalence

At issue was whether or not Bell Helicopter's Production landing gear infringed the one valid claim of the patent. The Federal Court of Appeal dismissed Eurocopter's submission that any helicopter landing gear that is functionally equivalent to the landing gear disclosed in the patent infringes the patent. This approach is not consistent with the language of the patent and the purposive construction approach as set out in the Whirlpool and Free World Trust decisions:

The key to a purposive construction of patent claims is the identification by the court of what the inventor considered to be the "essential" elements of the invention, while distinguishing what is non-essential: Whirlpool at paras. 45 to 47; Free World Trust at para. 31. The onus is on the patentee to establish that an element is non-essential and thus substitutable. If the patentee fails to discharge that onus, the descriptive word or expression is to be considered essential unless the context of the claim language otherwise dictates: Free World Trust at para. 57.

Sound Prediction

One rather unique aspect of Justice Martineau's decision was that it applied the doctrine of sound prediction, which is typically used in the pharmaceutical or chemical field, to a mechanical invention. The Federal Court of Appeal notably supported the application of the doctrine, and cited the decision of Justice Binnie in Apotex v. Wellcome, 2002 SCC 77:

I disagree with Eurocopter's submission that the doctrine of sound prediction cannot apply to the field of mechanical inventions. As noted by Justice Binnie in Wellcome at para. 69: "Once it is accepted that in appropriate circumstances utility can be predicted in advance of complete testing (whether of untested chemical compounds or otherwise), there seems no reason in principle why the doctrine should not be applied more generally, depending, of course, on the expert evidence". [emphasis added]

On the facts of this case, the Federal Court of Appeal found that the calculations and mathematical modeling provided in the patent to establish the specific advantages claimed for the invention could not constitute evidence per se of utility. The calculations to the effect that the embodiment should work in the manner claimed in the patent amounted to a prediction and not a demonstration of that utility. While the Court acknowledged that there may be situations in which a prediction of utility may be equivalent to a demonstration of utility, it chose not to address that issue in this case.

Punitive Damages

The Federal Court of Appeal also confirmed that punitive damages may be awarded in patent infringement cases. Justice Martineau's decision on this issue was of interest because: 1) no helicopter with the infringing technology was actually sold or delivered; and 2) punitive damages had rarely been awarded in cases of patent infringement.

At trial, Bell Helicopter was found to have known about Eurocopter's patent and realized that its Legacy landing gear closely resembled Eurocopter's product. There was evidence that these concerns were voiced by staff at Bell Helicopter, but ignored by management. There was also evidence showing that Bell Helicopter promoted the infringing Legacy landing gear as its own invention. All of this constituted, according to Justice Martineau, "willful blindness or intentional and planned misappropriation of the claimed invention". The Federal Court of Appeal upheld the award of punitive damages, stating:

Where a person infringes a patent which it knows to be valid, appropriates the invention as its own, and markets it 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 objectives of retribution, deterrence and denunciation of such conduct. Indeed, such conduct departs to a marked degree from ordinary standards of decent behaviour. It must be denounced in a manner that deters similar misconduct in the future and marks the community's collective condemnation.

Summary

The Federal Court of Appeal's decision provides an important discussion on functional equivalence, sound prediction, and punitive damages in patent cases. The following points can be taken from this decision:

  • Functional equivalence is not a proper basis for a finding of infringement;
  • Sound prediction may be applied outside of the chemical and pharmaceutical fields; and
  • Punitive damages may be awarded in patent infringement cases for intentional infringement and misappropriation of the claimed invention.

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 Mondaq.com.

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

Authors
R. Scott MacKendrick
Jerry Z. Chen
Similar Articles
Relevancy Powered by MondaqAI
Bereskin & Parr LLP
Gowling WLG
Gowling WLG
Blake, Cassels & Graydon LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Bereskin & Parr LLP
Gowling WLG
Gowling WLG
Blake, Cassels & Graydon LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
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

Mondaq.com (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 www.mondaq.com

To Use Mondaq.com 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.

Disclaimer

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.

General

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