Extending Recent Promised Utility Doctrine Beyond Pharmaceutical And Chemical Cases

On January 30, 2012, the Federal Court released its decision in Eurocopter v. Bell Helicopter Textron Canada Limitée ("Bell") (2012 FC 113). It held one claim of the patent was valid and infringed. The patent relates to a skid-type landing gear for helicopters.

In the April 4, 2012 edition of IP Report, the significance of the punitive damages awarded by Justice Martineau was discussed. In this follow-up article, we discuss another interesting aspect: the validity challenge relating to utility. While Justice Martineau upheld the patent's validity, he found several claims invalid for lack of utility.

Significantly, Justice Martineau employed the "promised utility" framework recently developed in pharmaceutical cases in this mechanical context. He began his utility analysis by construing the "promise" of the patent.

Over the past few years, there has been a departure in pharmaceutical cases from the general principle of "scintilla" of utility. The courts have embarked upon a "construction of the promise of the patent" exercise to almost inevitably find a promise of a result somewhere in the patent's description. Some decisions have gone so far as to hold patentees to promises implied by the Court. Once a promise has been found, utility is measured against the construed promise including whether the "promised" utility was demonstrated or soundly predicted as of the Canadian filing date.

In construing the promise, Justice Martineau rejected Eurocopter's assertion that the utility of the patent was simply to provide a working landing gear. He found that there was an explicit promise to reduce drawbacks of prior art "significantly" and found that the patentee had elected to "extol the virtues" of the invention. The promised drawbacks were: (a) elevated acceleration factors upon landing (load factors); (b) difficult frequency adaptation with respect to ground resonance; and (c) high landing gear weight. Interestingly, none of these "promised advantages" are stated in the claims of the patent.

While agreeing that the patent promised certain advantages, Justice Martineau rejected Bell's argument that the patent promised specific percentage reductions in the mass of landing gear, the costs of production, and the load factor. The Court noted the importance of distinguishing the promised advantages and the data upon which they are based, and held that an allegation of invalidity based on incorrect data would be one of misrepresentation (which Bell had...