Date: 20101224
Docket: T-737-08
Citation: 2010 FC 1328
Montréal, Quebec, December 24,
2010
PRESENT: The Honourable Mr. Justice Martineau
BETWEEN:
|
|
EUROCOPTER
(société par actions
simplifiée)
|
|
|
|
Plaintiff/
Defendant by Counterclaim
|
|
and
|
|
|
BELL HELICOPTER TEXTRON CANADA LIMITÉE
|
|
|
|
Defendant/
Plaintiff by Counterclaim
|
|
|
|
|
REASONS FOR ORDER AND ORDER
[1]
The
Defendant/Plaintiff by Counterclaim (the Defendant) claims the inadmissibility
of the Expert Report of Murray Wilson dated November 11, 2010 (the Wilson
Report) and any viva voce testimony presented by Wilson during the
trial, on four (4) grounds:
·
Wilson’s testimony
regarding the patent examination process and the prosecution of the patent is
irrelevant;
·
Wilson’s testimony
regarding Canadian patent law is inadmissible expert testimony on domestic law;
·
Wilson’s
testimony regarding the construction of Canadian Patent No. 2,207,787 (the ’787
Patent) and responding substantively to the Defendant’s expert reports is
inadmissible as Wilson is not being offered to the Court as a person skilled in
the art to whom the patent is addressed, nor does he qualify as such; and
·
Wilson’s testimony
regarding whether a patent examiner would have rejected the claims of the ‘787
Patent based on the Defendant’s invalidity attacks is inadmissible and
irrelevant.
[2]
This
type of motion is most often presented as an interlocutory motion to either a
prothonotary or another judge, but the parties have requested to present it to
me in my capacity as trial judge. The present trial is scheduled to start in
about two weeks from now, that is, on January 10, 2011.
[3]
The
case in question is a standard patent infringement proceeding. The principal
action was instituted by the Plaintiff/Defendant by Counterclaim (the Plaintiff)
on the grounds that the Defendant’s helicopter landing gear is violating the
‘787 Patent. The Defendant denies that its helicopter landing gear infringes
the claims of the ‘787 Patent and instituted a counterclaim against the
Plaintiff seeking the invalidity of the ‘787 Patent.
[4]
In
preparation for the action, the parties have exchanged expert reports. The
Plaintiff served the reports of Andrew H. Logan and E. Robert Wood on the issue
of infringement and of Andrew H. Logan, E. Robert Wood, François Malburet
and Murray Wilson on the issue of invalidity.
[5]
Murray
Wilson is a retired patent examiner with a Bachelor’s Degree in mechanical
engineering. He has no particular expertise or experience with helicopter
landing gear. He has 37 years of experience with the patent examination process
and is acknowledged by both parties as an expert in the practices of the Patent
Office.
[6]
The
Wilson Report is comprised of 8 sections. The names and contents thereof are as
follows:
1. Introduction
– Mr. Wilson introduces himself and his qualifications
2. Material
Instructions – Mr. Wilson sets out the mandate he has been given.
3. The Patent
Examination Process – Mr. Wilson outlines the process by which a patent is
approved by the Patent Office.
4. Canadian
Patent 2,207,787 – Mr. Wilson reviews the examination history of Canadian
Patent 2,207,787.
5. Novelty – Mr.
Wilson discusses the concept of novelty as per the Patent Act and the Manual of
Patent Office Practice (MOPOP) in relation to the examiner’s task, and
addresses the Defendant’s Expert reports on novelty.
6. Utility – Mr.
Wilson discusses the concept of utility as per the Patent Act and the MOPOP in
relation to the examiner’s task and the Defendant’s Expert reports on utility.
Mr. Wilson speculates on the process taken by the examiner.
7. Best Mode –
Mr. Wilson discusses the best mode requirement set out in the Patent Act and
evaluates the drawings submitted with the ‘787 Patent.
8. Sound
Prediction – Mr. Wilson comments on the Patent Office’s understanding of what
is required for a sound prediction and applies this to the ‘787 Patent.
[7]
Admission
of expert evidence depends on the application of the following criteria:
a) relevance;
b) necessity in
assisting the trier of fact;
c) the absence
of any exclusionary rule;
d) a properly
qualified expert (R. v. Mohan, [1994] 2 S.C.R. 9 at paragraph 17).
[8]
Applying
this test to the facts at hand, the Wilson Report is deemed inadmissible for
the following reasons.
[9]
A
large amount of the Wilson Report is an exposé of the evaluation that the ‘787
Patent would have undergone during the examination process. While there is no
question that Mr. Wilson is in a position to provide this general information
to the Court, this information is not relevant, as the patent examination
process is not in question.
[10]
Furthermore,
Mr. Wilson speculates, on several occasions, on how a patent examiner would
respond to the Defendant’s invalidity argument against the ‘787 Patent. Given
the expert’s role to inform the Court, such speculation is irrelevant in the
case at hand. The Court must assess the Defendant’s invalidity attacks from the
point of view of the person skilled in the art, and not the point of view of
the Patent Office.
[11]
The
Wilson Report also fails the criterion of necessity. It is well-established
that the Federal Court shall take judicial notice of any public or private Act
of the Federal Parliament and of the Legislature of the province (Section 18, Canada
Evidence Act, R.S.C. 1985, c. C-5). Consequently, while expert evidence may
be required for international law, it is not admissible as to domestic law (Pan
American World Airways Inc. v. The Queen, [1979] 2 F.C. 34 (T.D.) at p. 44,
affirmed [1980] F.C.J. no. 1158 (F.C.A.) (QL), affirmed [1981] 2 S.C.R. 565
(S.C.C.)).
[12]
The
Wilson Report’s discussion of the requirements of the Patent Act, R.S.C.
1985, c. P-4, and the patent examination process, which is governed by the Patent
Act and the Patent Rules, SOR/96-423, is thus unnecessary. The
Wilson Report’s discussion of the file wrapper is also unnecessary, as the file
wrapper is already in evidence.
[13]
The
third criterion is also not met, as expert evidence on domestic law is not
permitted.
[14]
Finally,
the Wilson Report fails to meet the fourth criterion. As mentioned previously,
there is no question that Mr. Wilson is an expert on the patent examination
process, but he is certainly not an expert on helicopter landing gear.
[15]
Part
of the judge’s task in a case such as the present one is the construction of
claims. Expert evidence is admissible to assist the judge, but the evidence is
intended only to render the judge knowledgeable in order to construct the
claims, and not to interpret the claims for the judge (Whirlpool Inc. v.
Camco Inc., [2000] 2 S.C.R. 1067 at paragraph 57). A claim must be given a
purposive construction, which results from an objective determination of what a
person skilled in the art would have understood the inventor to mean (Whirlpool,
above, at paragraph 53).
[16]
The
natural result of the above is that, in order for an expert to assist the Court,
the expert must be able to give evidence about what an appropriately skilled
person would have known and understood at the time in question. Mr. Wilson is
manifestly not such a person. The Plaintiff’s expert, Andrew H. Logan,
describes the person skilled in the art to whom the ‘787 Patent is addressed as
follows:
[A] team of engineers, each of whom would
have at the very least a Bachelor’s degree in engineering, with several years
experience working as members of a helicopter landing gear design team with
exposure to dynamics, structure analysis, materials, vibration analysis,
certification and testing. […] Alternatively, […] a senior Engineer […] who has
had many years of experience leading helicopter design teams [or] a senior
academic with a Masters or Ph.D. degree in engineering in a related discipline,
with specific experience in designing or consulting on the design of helicopter
landing gear.
[17]
The
Plaintiff claims that the Wilson Report does not seek to assist the Court in
its construction of the ‘787 patent claims but rather, merely to inform the
Court of the Patent Office’s practices. This claim is not supported by the text
of the Wilson Report. For example, Mr. Wilson analyzes the specification to
determine the utility of the invention, and whether the data provided in the
patent meets the best mode and sound prediction criteria. He also examines the
prior art cited by the Defendant’s experts. These passages do not qualify as
informing the Court of the Patent Office’s practices. Rather, they, like most
of the Wilson Report, constitute argument.
[18]
The
Plaintiff cites numerous cases in support of its bid for the admission of the
Wilson Report. However, of these cases, only two were not simply interlocutory
motions (Lundbeck Canada Inc. v. Genpharm Inc., (2007) T-372-07 and Lundbeck
Canada Inc. v. Genpharm Inc., (2009) T-372-07; Merck v. Pharmascience,
2010 FC 510). Furthermore, the facts of those cases differ substantially from
those of the case at hand.
[19]
Finally,
the Plaintiff argues that even if the Court accepts that the Wilson Report does
not meet the Mohan test, the Court should not declare the Wilson Report
inadmissible, as the Defendant would not suffer any prejudice from its
admission.
[20]
The
Court disagrees with this statement. The Wilson Report may only be a small part
of the Plaintiff’s argument, but its admission requires the Defendant to
dedicate time and resources to its response. This is sufficient prejudice in
the eyes of the Court.
[21]
With
respect to costs, Counsel for the parties have agreed that a lump sum of $3,000
should be awarded to either party in function of the result of the motion.
[22]
In
conclusion, an order granting the motion made by the Defendant and excluding
the Wilson Report and Wilson’s testimony at trial is issued accordingly, with
costs of $3,000 to be paid forthwith, in any event of the cause, by the
Plaintiff to the Defendant.
ORDER
THIS COURT
ORDERS that
1. The Expert
Report of Murray Wilson dated November 11, 2010 is inadmissible.
2. The Plaintiff
is barred from presenting Murray Wilson as an expert witness at trial.
3. Costs in the
amount of $3,000 to be paid by the Plaintiff to the Defendant forthwith, in any
event of the cause.
“Luc
Martineau”
Email this Content