United States District Court, D. Columbia.
For BELL HELICOPTER TEXTRON INC., Plaintiff: Eleanor Martha Yost, LEAD ATTORNEY, GOODWIN PROCTER LLP, Washington, DC; Calvin E. Wingfield, PRO HAC VICE, GOODWIN PROCTER, LLP, New York, NY; Charles H. Sanders, PRO HAC VICE, GOODWIN PROCTER LLP, Boston, MA; Emily Ann Beman, PRO HAC VICE, GOODWIN PROCTER, LLP, New York, NY; Jacob R. Osborn, GOODWIN PROCTER, LLP, Washington, DC; Jennifer Ann Albert, GOODWIN PROCTER LLP, Washington, DC; Michael Strapp, PRO HAC VICE, GOODWIN PROCTER LLP, Boston, MA; Samuel Edward Sherry, PRO HAC VICE, GOODWIN PROCTER LLP, Boston, MA; Scott L. Robertson, GOODWIN PROCTER, LLP, Washington, DC; Timothy J. Rousseau, PRO HAC VICE, GOODWIN PROCTER LLP, New York, NY.
For AIRBUS HELICOPTERS, Defendant: Carmine Ralph Zarlenga, III, LEAD ATTORNEY, MAYER BROWN LLP, Washington, DC; Kyle E. Friesen, LEAD ATTORNEY, PRO HAC VICE, Mayer Brown LLP, Houston, TX; Barry Clayton McGraw, PRO HAC VICE, MAYER BROWN LLP, New York, NY; Brian W. Nolan, PRO HAC VICE, MAYER BROWN LLP, New York, NY; Brian A. Rosenthal, MAYER BROWN LLP, Washington, DC; Clinton H. Brannon, MAYER BROWN LLP, Washington, DC; Trent L. Menning, PRO HAC VICE, MAYER BROWN LLP, Houston, TX.
For AIRBUS HELICOPTERS, Counter Defendant: Carmine Ralph Zarlenga, III, LEAD ATTORNEY, MAYER BROWN LLP, Washington, DC; Kyle E. Friesen, LEAD ATTORNEY, PRO HAC VICE, Mayer Brown LLP, Houston, TX; Barry Clayton McGraw, PRO HAC VICE, MAYER BROWN LLP, New York, NY; Brian W. Nolan, PRO HAC VICE, MAYER BROWN LLP, New York, NY; Brian A. Rosenthal, MAYER BROWN LLP, Washington, DC; Clinton H. Brannon, MAYER BROWN LLP, Washington, DC; Trent L. Menning, PRO HAC VICE, MAYER BROWN LLP, Houston, TX.
For BELL HELICOPTER TEXTRON INC., Counter Defendant: Calvin E. Wingfield, PRO HAC VICE, GOODWIN PROCTER, LLP, New York, NY; Charles H. Sanders, PRO HAC VICE, GOODWIN PROCTER LLP, Boston, MA; Emily Ann Beman, PRO HAC VICE, GOODWIN PROCTER, LLP, New York, NY; Jennifer Ann Albert, GOODWIN PROCTER LLP, Washington, DC; Samuel Edward Sherry, PRO HAC VICE, GOODWIN PROCTER LLP, Boston, MA; Scott L. Robertson, GOODWIN PROCTER, LLP, Washington, DC; Timothy J. Rousseau, GOODWIN PROCTER LLP, PRO HAC VICE, GOODWIN PROCTER LLP, New York, NY.
ROBERT L. WILKINS, United States Circuit Judge.
This matter is before the Court for disposition following a hearing on defendant Airbus Helicopters' motion for permanent injunctive relief. Upon consideration of the evidence submitted at trial, the parties' post-hearing briefs, and the relevant legal authorities, the Court finds that a permanent injunction is warranted, and will therefore grant the motion.
A. The Parties and the '621 Patent
This lawsuit involves a dispute between two of the largest distributors of commercial helicopters in the world: Bell Helicopter Textron, Inc. (" Bell" ), and Airbus Helicopters (" Airbus" ). Bell is a corporation organized under the laws of Delaware, and operates its principal place of business in Fort Worth, Texas. Compl. ¶ 4 (Dkt. No. 1); Counter-Compl. ¶ 4 (Dkt. No. 15). Airbus is a corporation constituted under French law, with its principal place of business in Cedex, France. Counter-Compl. ¶ 2.
Airbus owns a group of related patents that cover its sleigh-type landing gears: French Patent No. FR 96-07156 (the " French '156 Patent" ), Canadian Patent No. 2,207,787 (the " Canadian '787 Patent" ), and U.S. Patent No. 5,860,621 (the " '621 Patent" ). See '621 Patent, at ; Compl. ¶ 18; Answer ¶ 18. The '621 Patent, titled " Helicopter Landing Gear with Skids," boasts of several improvements from conventional landing gears, including reductions in mass, load factor, manufacturing costs, and ground resonance. '621 Patent, col. 1 lines 33-44. The '621 Patent achieves its reduction in ground resonance by allowing the front cross-piece of the landing gear to move in both flexion and in torsion instead of in pure flexion, as is the case with conventional landing gears. Id. at col. 2, lines 10-20.
Claim 1 of the '621 Patent, which is the sole independent claim, reads as follows:
1. Helicopter landing gear, comprising a plurality of skids having a longitudinal support stretch for standing on ground and which are connected to a front cross-piece and a rear cross-piece for attachment to a structure of an aircraft by connecting devices, the rear cross-piece being fixed by ends of descending branches to a rear part of each said longitudinal support stretch, wherein each of said skids comprises a front comprising an inclined transition zone with double curvature oriented transversely with respect to each said longitudinal
support stretch to form together an integrated front cross-piece offset with respect to a front delimitation of a plane of contact of each said longitudinal support stretch of each of said skids.
Id. at col. 6, lines 50-62. An embodiment of this claim is illustrated below:
Id., Drawing Sheet 1, Figure 1.
Witnesses in this litigation referred to the landing gear described in the '621 patent variously as the " Moustache landing gear," " sleigh landing gear," " sled landing gear," and/or, when referring to the version used on the Bell Model 429 helicopter, the " Original Gear." Oct. 20 AM Tr. at 34:3-14 (testimony of Pierre Prud'homme Lacroix); Oct. 20 AM Tr. at 64:14-17 (testimony of Bernard Certain); id. at 68:18-20; Oct. 22 AM Tr. at 27:2-28:5 (testimony of Robert E. Gardner); id. at 31:13-20.
B. The Landing Gear Litigation
On May 9, 2008, Airbus and Airbus Canada Limited -- then Eurocopter and Eurocopter Canada Limited, respectively -- sued one of Bell's subsidiaries, Bell Helicopter Textron Canada Limited, for patent infringement, alleging that the Original Gear designed for the Bell Model 429 helicopter (the " Bell 429" ) infringed the Canadian '787 Patent. Compl. ¶ 21; Answer ¶ 21. Soon after the commencement of the Canadian action, Bell developed a new design for the Bell 429 landing gear (the " Modified Gear" ) and ceased its use of the Original Gear. Oct. 21 AM Tr. at 45:11-18 (testimony of Andrew H. Logan); Oct. 22 AM Tr. at 32:21-33:8 (Gardner).
In May 2010, Bell commenced the instant action, seeking a declaratory judgment for non-infringement and invalidity of the '621 Patent. Airbus filed counterclaims, alleging that both the Original Gear and the Modified Gear infringed the '621 Patent, and seeking injunctive relief and monetary damages. The parties subsequently asked the Court to construe a number of disputed claim terms in the '621 Patent. After conducting a hearing under Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), and reviewing the parties' briefs, the Court issued an opinion setting forth the claim constructions. See Bell Helicopter Textron Inc. v. Eurocopter, 876 F.Supp.2d 71, 73 (D.D.C. 2012).
The parties agreed that the Original Gear infringed claim 1 of the '621 patent as construed by the Court. Jt. Pretrial Statement ¶ 39 (Dkt. No. 142). They fiercely
disputed, however, whether the Modified Gear infringed the '621 patent, and also whether any infringement warranted damages or injunctive relief. The parties submitted summary judgment briefing on these issues, and on August 15, 2014, the Court held that the Modified Gear did not infringe the '621 patent, either literally or under the doctrine of equivalents. See Mem. Opinion at 6-14 (Dkt. No. 104). The Court also held that Airbus was barred from seeking damages for acts of infringement prior to October 29, 2010, due to Airbus's failure to mark its patented landing gear. Id. at 14-15; see 35 U.S.C. § 287(a). The Court declined to grant summary judgment on injunctive relief or damages for any post-October 29, 2010 acts of infringement, noting that expert discovery on damages was not yet complete. See Mem. Opinion at 15-21.
The case was set for trial on injunctive relief and damages for any infringement that had taken place after October 29, 2010. Through the parties' pre-trial motions, however, it became apparent that Airbus was unable to put forth a viable theory of infringement occurring after October 29, 2010, and instead intended to rely on legally irrelevant evidence of infringement occurring prior to that date for the purpose of showing damages.
As a result, at the pre-trial conference held on September 23, 2014, the Court granted Bell's motion in limine to exclude such evidence. Sept. 23 Tr. at 78:6-89:24; Oct. 1, 2010 Order (Dkt. No. 169). Because the parties agreed that exclusion of this evidence would effectively foreclose Airbus's theory of damages, the Court treated Bell's motion as a renewed motion for summary judgment. Sept. 23 Tr. at 81:10-82:8. Even when viewing the evidence in the light most favorable to Airbus, the Court found that there was no genuine question of material fact as to infringement occurring after October 29, 2010. Id.
Although Airbus's failure to mark its landing gear precluded the award of monetary damages for pre-October 29, 2010 acts of infringement, Airbus was still entitled to seek an award of injunctive relief based on any such acts. Airbus elected to pursue a permanent injunction against Bell, in order to prevent Bell from utilizing the Original Gear (or any other landing gears that infringe the '621 patent) in the future. A three-day hearing was held from October 20 to October 22, 2014, and the parties subsequently submitted post-hearing briefs.
The Court now makes the following findings of fact and conclusions of law, as required under Rule 52 of the Federal Rules of Civil Procedure.
II. FINDINGS OF FACT
i. Airbus's development of a sleigh-style landing gear
1. The development of helicopter landing gears is very complex and time consuming, and conventional landing gears can have a number of drawbacks, including high load factors, difficult frequency adaptations for purposes of ground resonance,
and rather high landing gear weight. Minderhoud Dep. Tr. at 133:7-10;  DX-99; Oct. 21 AM Tr. at 37:12-38:7 (Logan).
2. Ground resonance is a serious phenomenon that can occur in multi-bladed helicopters (i.e., helicopters with more than two blades) depending largely on the stiffness of the helicopter's landing gear, as the landing gear responds to the vibrations generated by the helicopter's rotor, which may in turn amplify the movement of the helicopter, cause the helicopter to become unstable, and in some cases destroy it. Oct. 20 AM Tr. at 37:13-22, 39:16-21 (Lacroix); Oct. 20 AM Tr. at 61:4-8 (Certain); DMX-12; Minderhoud Dep. Tr. at 94:3-95:1.
3. When Airbus developed its first prototype of the EC-120 aircraft, one of its single engine helicopters, it used conventional landing gear that was not satisfactory with respect to ground resonance. Oct. 20 AM Tr. at 37:2-8 (Lacroix); Oct. 20 AM Tr. at 60:21-61:3 (Certain).
4. Airbus developed the Moustache landing gear at the end of 1995 or early 1996. Airbus Helicopters engineer Pierre Prud'Homme Lacroix performed the air frame analysis related to the Moustache landing gear, and engineer Joseph Mairou performed the design and the integration of the Moustache gear into the EC-120's airframe. Oct. 20 AM Tr. at 40:24-41:20 (Lacroix).
5. The result of the predefinition phase was an acceptable landing gear design in terms of stiffness in the helicopter's roll mode for ground resonance. Oct. 20 AM Tr. at 42:22-43:7 (Lacroix).
6. The Moustache gear prototype was then installed on the prototype EC-120 and was flight tested in July of 1996. Oct. 20 AM Tr. at 43:8-22 (Lacroix).
7. Airbus' Flight Test Engineer for the EC-120 program, Bernard Certain, concluded that there were no ground resonance problems with the new Moustache gear, which performed perfectly. Oct. 20 AM Tr. at 43:23-44:5 (Lacroix); Oct. 20 AM Tr. at 59:3-12, 64:2-11 (Certain).
8. Mr. Certain asked that a patent be applied for on its design, which in turn led to Airbus' '621 patent. Oct. 20 AM Tr. at 67:2-18 (Certain); DX-001. 9. Airbus uses the patented landing gear on its EC-120 and EC-130 helicopters. Arfi Dep. Tr. at 39:19-40:4.
ii. Bell's adoption of infringing gear
10. Bell's Modular Affordable Product Line (" MAPL" ) was a design project under lead engineer Malcolm Foster to try to design modular components that could be used on multiple aircraft; the landing gear that was developed as part of the MAPL project grew into the Original Gear of the Bell 429. Gardner Dep. Tr. at 44:1-11, 44:15-22, 59:5-8.
11. Prior to the Bell 429, every Bell helicopter that used a skid landing gear used a conventional skid landing gear; as part of the MAPL program, a task force at Bell was charged with evaluating landing gear options for use on new Bell helicopters. Minderhoud Dep. Tr. at 58:5-12;
Oct. 21 PM Tr. at 25:11-27:18 (Kerr); DX-104.
12. Bell's Peter Minderhoud was involved in the development of the Original Landing Gear for the Bell 429, Bell's Mithat Yuce was the lead dynamicist for the Bell 429 and was involved in dynamics and assessing ground resonance characteristics for the landing gear in both the MAPL program and the Bell 429 program, and Bell's Robert Gardner was a stress analyst, and later served as leader of the structures analysis team on the Bell 429 program. Oct. 22 AM Tr. at 22:14-23 (Gardner); Gardner Dep. Tr. at 46:13-18, 47:12-48:5; Yuce Dep. Tr. at 20:2-12.
13. As a result of an " aggressive" corporate development schedule for the Bell 429, Bell's team leader Robert Gardner felt that he was under " time pressure" on the Bell model 429 project, and that Bell was " at risk" on the Bell 429 program. Oct. 22 AM Tr. at 82:15-83:3, 83:15-84:11 (Gardner); Gardner Dep. Tr. at 168:13-169:6.
14. Bell's engineers recognized that the Bell 429 " program risk" could be reduced by investigating the landing gear properties for Airbus's EC-120. Minderhoud Dep. Tr. at 103:4-16, 104:6-18; Oct. 22 AM Tr. at 113:9-114:17 (Gardner); DX-32.
15. Bell leased an EC-120 helicopter for several months in 2003 and studied the EC-120's landing gear -- for example, conducting flight tests and handshake tests on the EC-120 while Bell was still developing the Bell 429 landing gear. Minderhoud Dep. Tr. at 65:3-67:11, 67:15-21, 68:13-20, 69:8-13; Oct. 21 PM Tr. at 27:11-28:1 (Kerr); DX-32; DX-34.
16. As a result of their study, Bell's employees determined that the EC-120 landing gear had good damping characteristics, and exceptional damping for the modes important to ground resonance. Bell's engineers never discovered exactly what the source of the high damping in the EC-120 landing gear was. DX-34 at BELL0036074 (" We noticed during shake tests last week that this gear [of the EC-120] provides exceptional damping for the modes important to ground resonance." ); Yuce Dep. Tr. at 99:21-100:9 (agreeing that " Bell never discovered exactly what the source of the high damping [in the EC-120 gear] was" ).
17. Accordingly, Bell decided to adopt " the sled gear (per the EC-120)" as its baseline design for the Bell 429 landing gear. Oct. 22 AM Tr. at 31:13-20 (Gardner); Gardner Dep. Tr. at 138:1-139:12; Minderhoud Dep. Tr. at 89:13-90:11; DX-32 at BELL0034245 (" [R Gardner] The baseline skid gear configuration is the sled gear (per the EC-120)." ).
18. Bell decided to use the sleigh gear design because it was the lightest configuration, and because Bell believed it was more aesthetically pleasing, provided better wire strike protection than conventional gears, and because it " had lower risk for the fore/aft resonance mode." DX-99 at 2; Minderhoud Dep. Tr. at 77:19-78:20; Minderhoud Dep. Tr. at 90:15-92:4; DX-32 at BELL0034245.
19. The final weight of the sleigh type landing gear for the Bell 429 was 108 pounds, which Mr. Minderhoud viewed as a very good result, and Bell was happy with that weight because a conventional gear was heavier. Minderhoud Dep. Tr. at 158:3-159:12 (" [C]ompared to what was the general experience with the weight of a landing gear, we were happy with this
weight . . . [b]ecause it was even a little lighter than that was expected at the time." ).
20. Though he was responsible for the structures analysis team that included the Bell 429's landing gear, and also served as the corporate representative at Bell's Rule 30(b)(6) deposition, Mr. Gardner has stated that he does not know whose idea it was to use a sleigh-type landing gear on the Bell 429. Gardner Dep. Tr. at 55:20-56:22; Oct. 22 Tr. at 31:23-32:1, 126:19-127:16, 128:16-129:14 (Gardner).
21. Robert Gardner was not credible in his testimony that no one at Bell could tell him who developed the sleigh-type landing gear, see supra at FF. 20, in light of the fact that he came to Bell and started working on the MAPL Project within a year of that decision being made, see Oct. 22 AM Tr. at 21:15-25:22, he was a part of the structural team which had responsibility for landing gear, id., and he had concerns about the fact that Bell was copying a competitor's landing gear, see infra at FF. 25-26. Furthermore, his statement that he was not involved in the decision, see Oct. 22 AM Tr. at 31:23-32:1, is undermined by email evidence, see DX-32, and the testimony of his former colleague. See Minderhoud Dep. Tr. at 78:12-79:5.
iii. Knowledge of the '621 patent
22. Airbus did not mark the landing gear on the EC-120 with the patent number. Oct. 20 PM Tr. at 52 (testimony of Alex Youngs); Oct. 21 AM Tr. at 56:8-10 (Logan).
23. There is no evidence in the record that Bell officials knew that the '621 patent existed. Oct. 21 AM Tr. at 55:18-56:14 (Logan).
24. Bell's Peter Minderhoud knew at the time he was working on the development of the Bell 429 about Airbus's use of a sleigh-type gear on the EC-120. Minderhoud Dep. Tr. at 84:10-18, 85:4-8.
25. When Mr. Gardner heard that Bell was considering a sleigh-type landing gear, he recognized that it was the same or similar shape as that of the EC-120 and brought it to the attention of Malcolm Foster and Bryan Linnington. Gardner Dep. Tr. at 59:5-20; Oct. 22 AM Tr. at 32:2-20 (Gardner).
26. Mr. Gardner's interpretation of Mr. Foster's response was that he should in essence carry on with the project. Gardner Dep. Tr. at 62:10-13 (Q. " And when you told Mr. Foster about this, he didn't seem surprised at all, did he?" A. " No." ); id. at 63:17-22 (Q. " And Mr. Foster's response was 'carry on'; that's how you interpret it?" A. " . . . . Essentially, yes." ); Oct. 22 AM Tr. at 108:10-109:2 (Gardner).
27. Bell has had an IP policy since at least 2002 that states that:
Textron's policy is to respect, avoid and not infringe the valid intellectual property rights of others. Textron operation managers, through their respective IPRT, are responsible for ensuring compliance with that policy. That requires that, whenever Textron commercializes a new product or process, the IPRT must have formed a good faith belief that there is no patent, trademark or copyright infringement and there has been no trade secret misappropriation. A good faith belief, may, in the judgment of the IPRT, rest upon the knowledge of the Team respecting the industry and, in certain instances, may require appropriate patent clearance or trademark clearance before new product commercialization.
DX-140 at BELL0023189. Bell's Robert Gardner could not recall seeing this policy. Gardner Dep. Tr. at 187:9-18; Oct. 22 AM Tr. at 105:12-109:6.
28. A group of Bell employees, including Robert Gardner, Peter Minderhoud, and Guy Lambert, came up with the idea for the Modified Gear at a brainstorming session in July of 2008, and in August 2008, Bell decided to use it. Gardner Dep. Tr. at 75:2-77:6; Oct. 22 AM Tr. at 32:21-33:21 (Gardner); DX-3 at BELL0001450 (" In August 2008, BHCTL decided to make Standard Landing Gear P/N 429-336-902 (hereafter referred to as " production standard landing gear" ) the landing gear configuration to be certified as part of the Model 429 Initial Certification currently planned for 13 February 2009." ).
29. Bell asserts that its engineers had disclosed the sled gear design almost twenty years before Airbus employed it in the EC-120. See Bell. Opp. 13. This claim was not fully developed by the evidence put forth at the hearing, and is undercut by the evidence that Bell leased an EC-120 and copied its landing gear.
iv. Manufacture of the infringing gear
30. The Original Gear was manufactured in Tennessee by Aeronautical Accessories, Inc., which is a wholly owned subsidiary of Edwards and Associates, which in turn is a wholly owned subsidiary of Bell. Gardner Dep. Tr. at 308:6-13; Oct. 21 AM Tr. at 34:22-35:10 (Logan); ...