Federal Court Confirms Availability of Gillette Defence Based on Obviousness

In Arctic Cat Inc v Bombardier Recreational Products Inc, 2016 FC 1047 (September 16, 2016), Roy J of the Federal Court held that upon a proper claim construction, the asserted claims of Canadian Patent No 2,322,738 (the 738 Patent) owned by Arctic Cat Inc (Arctic Cat) were not infringed by Bombardier Recreational Products Inc (BRP). 

The 738 Patent relates to electronic engine control for two-stroke engines.  Roy J found that central to the 738 Patent were ignition patterns that were either selected or modified using exhaust gas temperature.   Roy J concluded that BRP did not infringe the asserted claims because BRP’s engines extracted an ignition point, not an ignition pattern.

In the alternative, Roy J found that the asserted claims were obvious using the alternative construction that the term “ignition pattern” could include a single ignition point, which would capture BRP’s engines (the Gillette defence).  This was the first Canadian case in which the Court has confirmed that an obviousness-type Gillette defence is available even if the claims are not anticipated.

Roy J also considered the issue of inventorship, ruling that the low threshold of a “minor contribution” had not been met given the lack of evidence on what the sole inventor’s contribution would have been.

While not necessary, Roy J considered the issue of reasonable royalties for patent infringement had Arctic Cat been successful.  He did not accept any of the methods put forward by the experts; however, he observed that his findings did not mean that the royalties would be zero.

Artic Cat has appealed.

Summary By: Junyi Chen