Acts of infringement are broadly defined under French law, and this definition was further expanded in 2014. If we consider direct infringement of a product, article L. 613-3 (a) of the Code de la propriété intellectuelle defines the acts that are prohibited without the consent of the patent proprietor as:
making, offering, putting on the market, using, importing, exporting, transshipping or possessing for these purposes the product which is the subject-matter of the patent.
Exporting and transshipping are the two terms which were added in 2014. However, the most interesting terms for the purposes of a legal discussion are probably “offering” and “putting on the market“, as they leave quite a bit of room for interpretation, one recent example being an infringement case brought by Eurocopter, later renamed Airbus Helicopters, against the U.S. group Bell Helicopter, based on French patent No. FR 2749561 directed to a landing gear with skids.
In 2012, the Paris Tribunal de Grande Instance (TGI) rejected all infringement claims, as well as all invalidity counterclaims.
In 2015, the Paris Cour d’appel partly reversed, upholding the validity part of the first instance judgment but reaching a different conclusion on infringement. In particular, the appeal judges had a broader view than the first instance judges on what can constitute an offer for sale.
In 2005, Bell Helicopter presented a first version of a helicopter called Bell 429 to the public:
- by including it in their catalogue;
- by showing a model in September 2005 in the good town of Toussus le Noble, which was reported on the website of a helicopter enthusiast (Bell argued that this was a confidential presentation);
- by putting it up on the website of Rotor & Aircraft, their distributor in France.
The Bell 429, first version, incorporated the claimed landing gear, and this does not seem to have been contested by the defendant:
This literal reproduction was admitted when Mr. Robert G., structure manager of Bell Helicopter, was cross-examined during the Canadian proceedings and it is not challenged by Bell Helicopter Textron in the present proceedings.
But, said Bell, this first version of Bell 429 was a prototype. The TGI agreed, and noted in particular that when this first version was presented in France, it was not yet approved for sale.
But the Cour d’appel took a different view:
Since this was a prototype, only Bell Helicopter Textron can be responsible for the presentation to the public, which they do not deny. They state that the presentation of September 15, 2005 was confidential. But the public was aware of it, since a third party mentioned it. The fact that this website was not updated has no influence on the validity of the offer made at this date, since the prototype was presented on an internet website accessible from France by a company representing Bell Helicopter Textron in France.
Offering for sale extends to any material operation aiming at putting a product in contact with potential customers, at preparing a commercial launch, even if said product, which in the present case was not yet approved, could not be marketed. Indeed, this presentation of a competitor’s product in France may turn away part of the competitor’s customers. In fact, this presentation in France was preceded by presentations at the Heli-Expo congress in Houston, USA and at the annual forum of the American Helicopter Society in Montreal, Canada; and it was followed by short-term marketing of the second version apparatus, the approval of this second version having been obtained partly based on tests made on the first version.
This offer, in these circumstances, is an act of infringement.
So, even without any sale, and even if no sale is even possible because the product is not yet approved for sale, a presentation of the product to the public in France is an act of infringement if it can be analyzed as part of a preparation for future marketing. This seems to make sense, as it is certainly possible to start attracting customers even before the first product is actually sold.
Bell developed another line of defense based on article L. 613-5 of the Code, which provides a list of exemptions:
The rights conferred by the patent do not extend:
a) To acts performed in a private context and for non-commercial purposes;
b) To experimental acts concerning the subject-matter of the patented invention.
However, this line of defense was dismissed by the court, since Bell could not prove that any scientific experimentation had been performed. Therefore, the presentation was deemed commercial in nature.
Having dealt with the first version of the Bell 429 helicopter, the court turned to the second version, which appears to have been designed as a workaround of the Airbus patent. The second version was approved for sale in 2009.
The efficacy of the workaround was put to the test in front of the court – and it failed.
The claimed landing gear was in particular characterized by the presence of skids comprising, in the front, a double curvature inclined transition zone, transversely oriented with respect to longitudinal support stretches, and forming an integrated front cross-piece, offset relative to a front delimitation of a plane of contact of the longitudinal support stretches.
Bell’s non-infringement argument was that there was no cross-piece structurally integrated to the landing gear. Instead, there was a cross-piece fixed owing to connecting sleeves. In addition, the gear was longer toward the front, so that there was no offset of the cross-piece relative to the front delimitation of a plane of contact. Finally, the technical advantages offered by the patent were not achieved, as in particular the weight of the landing gear was increased in this second version of Bell 429.
But the court held that there was still a double curvature inclined transition zone in the second version. Although a piece had been added in the front, the claim did not require the cross-piece to be at the front end of the gear, but only required the cross-piece to be offset relative to a front delimitation of the plane of contact, which was still the case. Regarding the structural integration of the cross-piece, the court noted that said cross-piece formed “a functional set” with the skids, so as to transmit mechanical constraints.
According to the court,
This configuration differs from classical landing gears, the cross-pieces of which are fixed with connecting sleeves and do not form a functional set.
Without having access to the evidence, it is of course difficult to know whether the assessment made by the court is technically correct or not. But what is remarkable anyway is that the fact that the configuration of the infringing device was similar to that of the claimed invention, while at the same time different from conventional devices, appears to have been a key factor.
But the actual test that French courts are supposed to apply relies on a functional analysis, which is why the Cour d’appel also looked at the function of patented features and investigated whether those were (i) reproduced by the Bell 429, second version, and (ii) could be protected per se (irrespective of the claim wording).
According to the patent, deformations are present on the inclined transition zones, that is, as a whole, and not only on the curves. This technical effect is also reproduced on the second version of the landing gear of the Bell 429 apparatus from Bell Helicopter Textron, as indicated by Mr. PPL who states that the deformations are present essentially regularly on the whole transition zone, the zone with the largest level of constraints being where the cross-piece is fixed on the apparatus.
The Airbus Helicopters patent covers, contrary to what is stated by Bell Helicopter Textron (namely that the implemented functions were known from the prior art), novel technical functions (front cross-piece with double curvature inclined transition zones, offset, which works in flexion on several planes and in torsion, related to the structure of the apparatus which transmits part of the constraints towards the skids), consisting in addressing the problem of resonance on the ground, by a better adsorption of forces upon landing.
The documents communicated by Bell Helicopter Textron to demonstrate that the functions performed by the inclined transition zones of the Airbus Helicopters’ patent would be known from prior art landing gears are not relevant as these documents relate to conventional landing gears which do not have an inclined transition zone and work, unlike the invention, in flexion in only one plane, and it was previously stated that this invention is novel and particularly innovative.
Quite interestingly, the patent proprietor conducted numerical simulations to demonstrate that the second version behaved similarly to the claimed invention in terms of energy adsorption. These numerical simulations were very criticized by the defendant, but the court did find them convincing.
Also, Bell had apparently submitted that the landing gear, second version, behaved similarly to the landing gear, first version, in the approval procedure for the helicopter in Canada.
The overall conclusion was thus the following:
This second version, despite the presence of a connecting sleeve on the first transition zone, and the addition of an element at the front end of the skid, has the same functions for the same result as the invention, and it is irrelevant that this result is not of the same level of sophistication as the invention’s. It should be noted that this modification of the first version was quickly implemented, apparently so as to react to the infringement lawsuit against the Canadian Bell company, a degraded embodiment making it possible to try to conceal the copying.
In other terms, the second version was found to infringe the patent as well.
Another noteworthy aspect of the judgment is that statements and evidence from the parallel proceedings in Canada were abundantly referred to, which is not really usual. Very often, judges do take interest in foreign proceedings but they do not directly cite them. However, in this case, they took note of some relevant statements:
Mr. Robert G., manager at Bell Helicopter Textron, who was heard during the Canadian proceedings, acknowledged in front of the court that this modification was determined further to some quick thinking in order to give the second version of the landing gear a behavior identical to the first version.
So the takeaway message for defendants could well be that a workaround supposed to work in the same way as a claimed invention is at a risk of being found infringing under the doctrine of equivalence. Unless of course the application of this doctrine can be ruled out because the technical functions at stake are already known from the prior art. At the very least, extreme caution is thus required at the time of the design-around.
As for this litigation, this is probably not the end of the story. First, a petition to the Cour de cassation (supreme court) is very likely in a high stake case such as this one. Second, the quantum of damages still needs to be determined. So, unless the parties settle (which is always an option, especially in the context of multinational litigation), we should hear again about Airbus Helicopters and Bell.
CASE REFERENCE: Cour d’appel de Paris, Pôle 5 chambre 2, March 20, 2015, Airbus Helicopters v. Bell Helicopter Textron Inc. et al., RG No. 13/00552.