Docket: T-1745-12
Citation:
2014 FC 861
Ottawa, Ontario, September 10, 2014
PRESENT: The
Honourable Madam Justice Strickland
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BETWEEN:
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SCOTT BLAIR
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Appellant
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and
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ATTORNEY GENERAL OF CANADA
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Respondent
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JUDGMENT AND REASONS
[1]
This is an appeal from a decision of the
Commissioner of Patents (Commissioner) dated March 21, 2012. The Commissioner
refused to grant a patent as requested in Canadian Patent Application Serial
No. 2,286,794 (Patent Application) for the invention entitled “SUBWAY TV MEDIA
SYSTEM” on the ground of obviousness. The appeal is brought pursuant to s. 41
of the Patent Act, RSC 1985, c P-4 (Act).
Factual Background
[2]
As a preliminary point, all references to the
Respondent in this decision are to the Attorney General of Canada (AGC). As
addressed below, the Commissioner had also been named as a respondent to this
appeal by the Appellant. The AGC brought a preliminary motion seeking an order
removing the Commissioner as a respondent which has been granted as part of
this judgment.
[3]
The present appeal has a long procedural history
including two prior decisions of this Court pertaining to the Patent
Application. In one of these, Blair v Attorney General of Canada and the Commissioner of Patents, 2010 FC 227 [Blair 2], Justice Mactavish set out
the history of this matter to that point in time, much of which is adopted
below.
[4]
The Appellant, the inventor, filed the Patent
Application on May 6, 1998. The application claimed priority from a patent
application (No 60/045, 811) filed in the United States on May 7, 1997. It is
not disputed that May 7, 1997 is the date to be utilized in assessing whether
the invention claimed was obvious.
Construction of the Claims
[5]
As noted above, the proposed invention is entitled
“SUBWAY TV MEDIA SYSTEM”. It relates to video display systems mounted in a
specified location on mass transit subway cars. The abstract describes it as
follows:
A television system for subway cars (10)
includes a plurality of TV monitors (22) mounted at intervals along the cars
(10), at the junction of the sidewall and the ceiling, and a central video
signal source unit (23) such as a video tape player, video disk player,
computer-based digital video recorder or television receiver, connected to the video
monitors (22). Programs of short duration, e.g. 5-15 minutes, matching the
average length of a subway ride, and comprising advertising messages, news
bytes and the like are played and displayed in the monitors repeatedly during
the subway ride.
[6]
The claims in issue are, with Claim 1 being the
primary claim:
1. A subway car for mass transportation including longitudinal opposed
sidewalls, a ceiling adjoining the sidewalls, a video display system comprising
a plurality of video display monitors each having a video screen, and a video
signal source unit operatively connected to said monitors, said monitors being
spaced along the length of the car on opposed sides thereof, each of said
monitor being mounted at the junction of the sidewall and ceiling, with the
screen of the monitor substantially flush with the adjacent wall surface
structure of the car, and directed obliquely downwardly toward the car seats,
so that each video screen is readily visible to passengers in the subway car.
2. The subway car of claim 1 wherein the video signal source unit
comprises a video tape player, a video disc player or computer based digital
video recorder.
3. The subway car of claim 1 or claim 2 wherein the video monitors
include LCD screens.
4. The subway car of claim 1, claim 2, or claim 3 including a
self-contained wiring cabling system connected the video monitors to the video
signal source unit.
5. The subway car of claim 1, claim 2, claim 3 or claim 4 including a
rigid transparent unit overlying the screen of each respective monitor, and
shaped to coincide with the shape of the internal wall of the subway car at the
location of mounting.
6. The subway car of claim 5 wherein the rigid transparent unit is
concavely curved so as to blend as a continuum with the internal walls of the
subway car at the location of mounting.
[7]
The Appellant put forth seven essential elements
to claim 1 which were accepted as the correct construction by Justice Mactavish
in Blair 2, above, at paras 59-60:
1. a subway car for mass transportation including longitudinal opposed
sidewalls, a ceiling adjoining the sidewalls (“subway car”);
2. a video display system comprising a plurality of video display
monitors each having a video screen (“multiple monitors”);
3. a video signal source unit operatively connected to said monitors
(“video source”);
4. said monitors being spaced along the length of the car on opposed
sides thereof (“spaced monitors”);
5. each of said monitors being mounted at the junction of the sidewall
and ceiling (“wall-ceiling junction placement”);
6. with the screen of the monitor substantially flush with the adjacent
wall surface structure of the car (“flush mounted”); and,
7. directly obliquely downwardly toward the car seats, so that each
video screen is readily visible to passengers in the subway car (“angled for viewership”).
Objections and Proceedings
[8]
During the initial prosecution of the Patent
Application at the Patent Office, several office actions were issued by the
patent examiner that rejected all of the claims on the basis of obviousness
pursuant to s. 28.3 of the Act, being that the subject-matter defined by a
claim must be subject-matter that would not have been obvious on the claim date
to a person skilled in the art or science to which it pertains, having regard
to the information set out in s. 28.3(a) and (b).
[9]
The Appellant attempted to overcome the
examiner’s objections to his application including by amending his claims to
those as set out above and providing letters from individuals who claimed to
have expertise in various aspects of the transportation industry, Dermot P.
Gillespie (Gillespie), Van Wilkins (Wilkins) and Jim Berry (Berry).
First Decision of the Commissioner of Patents
[10]
On October 21, 2002, the patent examiner issued
a final action refusing all of the claims of the Patent Application. The
examiner concluded that the claims would have been obvious on the claim date to
a person skilled in the art having regard to the United States Patent No.
5,606,154 issued to Doigan et al. (Doigan); French Patent No. 2,652,701
issued to Comerzan-Sorin (Comerzan-Sorin) and Canadian Patent No. 1,316,253
issued to Tagawa et al. (Tagawa), collectively the prior art, and in
light of the common general knowledge in the art.
[11]
The Appellant requested an oral hearing before
the Patent Appeal Board (PAB) which occurred on November 24, 2004. The PAB
found that the Patent Application would have been obvious at the claim date and
recommended that the decision in the patent examiner’s final action to reject
the application be affirmed. The Commissioner accepted this recommendation on
January 13, 2006.
[12]
The Appellant appealed the Commissioner’s
decision to this Court which was decided by an order of Justice Teitelbaum in Blair
v Attorney General of Canada et al in T-1176-06 [Blair 1]). In
support of his appeal, the Appellant filed new affidavit evidence from two
experts, Wilkins, a journalist in the field of public transportation, and
Yvonne Gibson (Gibson), an individual with experience in subway advertising.
Both opined that the design of the proposed patent would not have been obvious
to them.
[13]
Justice Teitelbaum allowed the appeal with
respect to the issue of obviousness and the Commissioner’s decision was set
aside. He remitted the matter to the Commissioner “for
review on the issue of obviousness in light of the fresh evidence filed on this
appeal, any further written legal submissions that the appellant may wish to
make, and the record previously before the Commissioner of Patents.”
Second Decision of the Commissioner Patents
[14]
A new panel of the PAB also concluded that the
Patent Application would have been obvious as of the claim date and recommended
rejecting the application. On October 26, 2007, the Commissioner accepted this
recommendation and refused to grant a patent to the Appellant on the ground of
obviousness.
[15]
The Appellant appealed this decision in Blair
2 and, by her decision dated February 26, 2010, Justice Mactavish rejected
the Appellant’s submissions of reasonable apprehension of bias arising, in
part, from an alleged failure to comply with Justice Teitelbaum’s direction to
consider the Gibson and Wilkins affidavits. However, she found two errors with
the decision, being the manner in which the Commissioner treated the evidence
contained in the Gibson and Wilkins affidavits, and, in how the Commissioner
applied the test for obviousness.
[16]
There, the Commissioner had concluded that the
subject matter of the claimed invention was not overtly technical and, as a
result, found the expert evidence of Gibson and Wilkins to be unnecessary. Justice
Mactavish found that, having admitted the affidavits as fresh evidence on the
Appellant’s first appeal, Justice Teitelbaum implicitly found this evidence to
be probative. Therefore, while the Commissioner could assess the persuasive
effect of the evidence, it was not open to her to find the evidence
unnecessary. Further, while the Commissioner refers to “the person of ordinary
skill in the art” (POSITA), a key element in assessing obviousness, she did not
clearly identify who that person was for the purposes of the obviousness
analysis. Justice Mactavish accepted the Appellant’s submission, not contested
by the Respondent, that the POSITA was a “person familiar with the installation
of video systems.”
[17]
Justice Mactavish also found that the
Commissioner erred in applying the obviousness test by separately considering
each element of the claim 1, on its own, in order to determine whether that
element was obvious, rather than considering the claim as a whole. She found
that it was clear from the description of claim 1 and the seven essential
elements of the claim as submitted by the Appellant, which she accepted as the
correct construction, that the invention involves a combination of constituent
elements, some of which were already known. Further, that where a claimed invention
lies in the combination of elements, “it is not
permissible to characterize the invention as a series of parts because the
invention lies in the fact that they were put together” (Omark
Industries (1960) Ltd v Gouger Saw Chain Co, [1965] 1 Ex CR 457, 45 CPR 169
[Omark]).
[18]
The effect of those errors was to render the
Commissioner’s decision unreasonable.
[19]
The Appellant also sought to introduce fresh
evidence on the appeal in the form of an affidavit from Richard Morris (Morris)
who described himself as a railway and transit signal specialist. Justice
Mactavish permitted the filing of this evidence which she found was probative
insofar as it demonstrated that no one else has thought to install video
screens in subway cars in the location identified by the Appellant. She also
found that it directly contradicted the finding in the Commissioner’s first
decision that the junction of the ceiling and sidewall of a subway car is the
logical and perhaps only available location in which to install a video screen,
which finding was also referred to the second decision. Further, the new
evidence concerned installation of video systems taking place in other parts of
the world just prior to the issuance of the Commissioner’s second decision. She
directed the Commissioner to consider this evidence on the question of
obviousness.
Commissioner’s Decision Under Appeal
[20]
On March 21, 2012, a different Commissioner
found that the proposed invention was obvious. That decision is the subject of
this appeal.
[21]
The Commissioner set out the procedural history of
the Patent Application along with the findings of Justice Teitelbaum and
Justice Mactavish. He also noted that the PAB had identified a difference
between the background of the POSITA, as defined in Blair 2, above, and
the backgrounds of the Appellant’s experts. The Appellant stated that the
skilled person “is a person familiar with the
installation of video systems” but the expert affiants had backgrounds
in various aspects of the transportation industry or subway advertising. The
PAB invited the Appellant to make further submissions on the issue. In
response, the Appellant submitted written submissions together with the
affidavits of three experts, Gordon Ballantyne (Ballantyne), Robert DiNardo
(DiNardo) and Wai Ng (Ng), who claimed expertise in the field of installing
video systems.
[22]
The Commissioner set out the statutory and
objective framework in which obviousness will be assessed, the test for
obviousness and applied the four step Sanofi approach to claim 1 and then
to the dependant claims 2-6 (Apotex Inc v Sanofi-Synthelabo Canada Inc,
2008 SCC 61, [2008] 3 S.C.R. 265 [Sanofi]). The Commissioner concluded
that while the combination of elements as a whole was novel as it was not found
within the prior art, it did not involve ingenuity as there was a trend in the
art of installing video systems in a wide variety of transportation systems. Given
this trend, no inventive ingenuity would have been involved in choosing to
install a video system in a subway car. The Commissioner then considered if an
inventive step had been involved in designing that particular implementation. In
that regard, he found that ordinary skill would have led the POSITA to select
the wall-ceiling junction placement of the monitors and ingenuity was not
involved. Similarly, the remaining essential elements, when considered for
completeness as part of the claimed combination, and when taken in combination
with the other claimed elements, did not establish an inventive step.
[23]
The Commissioner stated that a conclusion on the
obviousness of the combination could not be drawn without ensuring that the
totality of the evidence submitted by the Appellant had been considered. In
that regard, he addressed the affidavits of the Appellant’s experts in video
installation, Ballantyne, Di Nardo and Ng, each of which, having reviewed the
cited prior art and the Patent Application, stated that they would not have
found the present inventive concept obvious on the relevant date. The
Commissioner found, however, that they provided no rationale for their
conclusions and did not address the question of whether, in light of the trend
shown in the art and the common general knowledge, the inventive concept
involved an inventive step. Their submissions did not persuade him that any
ingenuity would have been required to arrive at the inventive concept.
[24]
The Commissioner found that the evidence of
Gillespie and Berry, who were experienced in the field of transportation, and
Wilkins who was experienced in rail/transit signalling, and the affidavits
submitted subsequent to the final action from Gibson and Morris, experts in
communications/marketing/corporate relations and mass transit respectively,
served primarily to illustrate that the claimed subject matter differs from the
state of the art at the relevant date. The Commissioner agreed that there are
differences over the state of the art and that the claimed subject matter is
novel.
[25]
However, the Commissioner found that evidence of
those experts speaks to the novelty of the invention and therefore assisted in
the obviousness analysis only to the point of step 3, identifying the
differences over the state of the art, and offered little assistance is
addressing the final step. Gibson, Wilkins and Morris offered their opinions
on the ultimate question of obviousness, each finding the present claim
unobvious. However, the Commissioner found, as with the submissions of the
three experts on video installation, they offered limited explanations for that
conclusion. Their submissions did not persuade him that any ingenuity would
have been required to arrive at the inventive concept.
[26]
The Commissioner also found that he could have
reached the same conclusion from an alternative starting point. Following the
general trend in public transportation systems, the Commissioner found that
there does not appear to be anything to elevate the present inventive concept
above a mere substitution. On Toronto Transit Commission (TTC) subway cars,
poster ads are located at the wall-ceiling junction and the Appellant’s primary
intended use of the video system is to run advertising messages. The claim,
therefore, merely involved substituting video monitors for the poster ads of
the prior art.
[27]
The Commissioner concluded that to complete the
claim 1 analysis he was required to turn to the Janssen “trend in the
art” factor and the Beloit test (Janssen-Ortho Inc v Novopharm Ltd,
2007 FCA 217 at para 25, 59 CPR (4th) 116 [Janssen]; Beloit Canada
Ltd v Valmet OY (1986), 8 CPR (3d) 289, 64 NR 287 (FCA) [Beloit]). Having
done so, he found that claim 1 was obvious as the POSITA would have come
directly and without difficulty to the solution taught by it.
[28]
The Commissioner noted that the Appellant did
not make submissions respecting claims 2-6 and that he appeared to rely on a
finding of non-obviousness of claim 1. The Commissioner concluded that the
additional elements introduced by claims 2-6, in combination with the essential
elements of claim 1, would have been obvious for want of an inventive step.
ISSUES
[29]
The Appellant frames the issues on this appeal
as follows:
- The Commissioner did not apply specific directions given by
Justice Mactavish;
- The Commissioner analyzed the elements of the claims separately
instead of analyzing the combination of those elements as a whole;
- The Commissioner did not fairly consider the evidence filed by
the Appellant. Instead of considering the evidence during the process of
determining whether the invention was obvious, the Commissioner first
determined the issue of obviousness and only considered the evidence to
see if the conclusion he had arrived at should be changed;
- The Commissioner’s use of “trend in the art” was a
retrospective exercise to explain way gaps in the prior art.
[30]
The Respondent states the issues on this appeal are
as follows:
- Is the Commissioner, the statutory decision-maker, a proper
respondent on this appeal?
- Should the new evidence relating to the Canadian Intellectual
Property Office’s (CIPO) administrative practice following a refusal be
given any weight on this appeal?
- After applying the correct legal test for “obviousness” to the
facts of the case, is the second reconsideration decision entitled to
deference?
[31]
I would reframe the issues as follows:
- Should the Commissioner be removed as a respondent to the
appeal?
- What weight, if any, should this Court afford to the
Appellant’s new evidence concerning the marking his application as being
“dead” by CIPO?
- What is the standard of review?
- Did the Commissioner err in finding the Appellant’s proposed
invention obvious?
PRELIMINARY ISSUES
ISSUE 1: Should the Commissioner be removed as a
respondent to this appeal?
Respondent’s Submissions
[32]
As a preliminary issue, the AGC sought an order
removing the Commissioner as a named respondent to the appeal.
[33]
The Respondent submits that the Commissioner is
not a proper party to the appeal. The naming of the proper respondent is
governed by Rule 338(1) of the Federal Courts Rules, SOR/98-106 (Rules).
As this was a statutory appeal brought pursuant to s. 41 of the Act, there was
no “first instance” proceeding naming any of the respondents and thereby
requiring them to be named as respondents on this appeal pursuant to Rule
338(1)(a). Further, statutory decision-makers are not “adverse in interest”
and otherwise do not have an “interest” in the appeal as described in that Rule
(Maple Leaf Foods Inc v Consorzio Del Prosciutto di Parma and Registrar of
Trade-marks, 2010 FCA 67 at para 9, 85 CPR (4th) 451 [Maple Leaf Foods]).
It is also well established that a tribunal or adjudicative body whose
decision is the subject of a judicial review or appeal must not be named as a
respondent or defendant (Genex Communications v Canada (Attorney General),
2005 FCA 283, [2006] 2 FCR 199 [Genex]).
[34]
The only exception to the rule that a body whose
decision is being attacked may not appear at the review proceedings or on an
appeal of their decision is where there is a statutory exemption (Genex,
above, at paras 64-66). There is no statutory requirement to name the
Commissioner as a respondent to an appeal under s. 41 of the Act. Therefore,
Rule 338(1)(b) does not apply and does not require the Commissioner to be
named. In these circumstances Rule 338(1)(c) provides for the AGC to be named
as the respondent on the appeal. As the AGC is prepared to respond, a motion
under Rule 338(2) is not required. The Rules only require that the
Commissioner be served with an appeal (Rule 339(1)(b)).
Appellant’s Submissions
[35]
The Appellant maintains that the Commissioner is
a proper party on this appeal. It notes that this is the third such appeal of
this matter and that in both prior appeals the Commissioner was named as a
respondent with no objection by the AGC.
[36]
The Appellant notes the absence of a provision
in Rule 338, which concerns appeals, similar to that found in Rule 303(1)(a),
which deals with applications, and which specifically states that a tribunal in
respect of which the application is brought shall not be named as a
respondent. This suggests that it is proper, even if not necessary, to name the
Commissioner in a s. 41 appeal.
[37]
Further, that in an application for prohibition
under the Patented Medicines (Notice of Compliance) Regulations,
SOR/93-133 (PM (NOC) Regulations), it is appropriate to name the Minister of
Health as a respondent, even though it is not set out in those regulations (Pfizer
Canada Inc v Canada (Minister of Health), 2007 FC 169 at para 11 [Pfizer]).
There are many cases where the Minister of Health is a party under the PM
(NOC) Regulations but there are also some other matters, including applications
for access to information, where the Minister is named.
[38]
In Krause v Minister of Finance et al,
[1999] 2 FCR 476 (CA), the Federal Court of Appeal held that in a judicial
review proceeding under ss. 18 and 18.1 of the Federal Courts Act, RSC,
1985, c F-7, it was improper to identify Her Majesty the Queen in Right of
Canada as a respondent. There, the Court amended the style of cause to
substitute the President of the Treasury Board and the Minister of Finance as
the respondents. While s. 41 of the Act is styled as an appeal, in substance
it is procedurally more similar to a judicial review by way of certiorari
because the Court reviews the record and may quash the decision under review
(René Dussault & Louis Borgeat, Administrative Law: A Treatsie, Vol
4 (Carswell: 1990)).
[39]
The Appellant submits that it is common practice
to name the Commissioner as a respondent in s. 41 appeals (Dutch Industries
Ltd v Commissioner of Patents, 2001 FCT 879, [2002] 1 FC 325, var’d
Barton No-till Disk Inc v Dutch Industries Ltd, 2003 FCA 121 [Dutch
Industries]; Attorney General of Canada and the Commissioner of Patents
v Amazon.com et al, 2011 FCA 328, [2012] 2 FCR 459 [Amazon]; Harvard
College v Canada (Commissioner of Patents), 2002 SCC 76, [2002] 4 S.C.R. 45 [Harvard
College]). The Commissioner was the appellant in both Amazon and Harvard College. In Amazon, the Federal Court of Appeal included a
specific direction regarding proper interpretation and application of
jurisprudence and, if the Commissioner was not a party, the Attorney General
would, in effect, become a messenger.
Analysis
[40]
The Respondent, pursuant to Rule 369, brought a
motion in writing on December 11, 2012, seeking an order removing the
Commissioner as a respondent to the appeal. By order dated February 11, 2013,
Prothonotary Milczynski adjourned the motion to be heard at the hearing of this
appeal on its merits.
[41]
The affidavit evidence filed by the AGC in
support of its motion includes as exhibits copies of correspondence between counsel
for the AGC and for the Appellant concerning this issue. Therein, counsel for
the Appellant stated that it was its understanding that the Commissioner was to
be included in the style of cause and served with the Notice of Appeal so as to
be obliged to provide a certified copy of the file history of the relevant Patent
Application to the Court. In this case, the record was provided to the Appellant
and the Court by the file preparation section of the Department of Justice.
Further, the AGC, and not the Commissioner, filed a Notice of Appearance.
[42]
For the following reasons it is my view that the
Commissioner should not have been named as a Respondent to this appeal.
[43]
As this is an appeal from the Commissioner’s
decision, Part 6 of the Rules applies. Rule 338(1) provides as follows:
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Persons to
be included as respondents
338. (1) Unless
the Court orders otherwise, an appellant shall include as a respondent in an
appeal
(a) every party
in the first instance who is adverse in interest to the appellant in the
appeal;
(b) any other
person required to be named as a party by an Act of Parliament pursuant to
which the appeal is brought; and
(c) where there
are no persons that are included under paragraph (a) or (b), the Attorney
General of Canada.
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Intimés
338. (1) Sauf
ordonnance contraire de la Cour, l’appelant désigne les personnes suivantes à
titre d’intimés dans l’appel :
a) toute
personne qui était une partie dans la première instance et qui a dans l’appel
des intérêts opposés aux siens;
b) toute autre
personne qui doit être désignée à titre de partie aux termes de la loi
fédérale qui autorise l’appel;
c) si les
alinéas a) et b) ne s’appliquent pas, le procureur général du Canada.
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[44]
In Genex, above, the Canadian
Radio-television and Telecommunications Commission (CRTC) made a decision not
to renew the appellant's broadcasting licence for a radio station. The Federal
Court of Appeal addressed the difference between Rules 303 and Rule 338 in the
context of a named respondent and found:
[62] In judicial review proceedings, rule
303 of the Federal Court Rules stipulates that an applicant shall name
as a respondent every person affected by the order sought in the application,
other than a tribunal in respect of which the application is brought. If these
proceedings were by way of judicial review rather than by way of appeal, as is
the case, it is clear that the CRTC would not be a respondent. However, it
could request status as an intervener in the proceedings: see rule 109. The
legal situation does not differ on an appeal. However, it is arrived at by a
different route.
[63] In fact, the status of the parties
to an appeal is governed by rule 338. Under that rule, an appellant shall
include as a respondent every party in the first instance who is adverse in
interest to the appellant in the appeal. Rule 2 defines a party in the first
instance in an action as a plaintiff, defendant or third party. In the case of
an application, such as an application for judicial review, the word
"party" refers to an applicant or respondent.
[45]
In my view, this disposes of the Appellant’s
suggestion that, based on the difference of wording between the two rules, or,
because the appeal has procedural similarities to a judicial review, that it is
proper, even if not necessary, to name the Commissioner as a respondent in a s.
41 appeal.
[46]
The Court in Genex went on to find that
the CRTC was not a party in the first instance and that, in the absence of a
statutory exemption, it was not entitled to appear in the appeal:
[64] In the application for renewal of the
appellant's licence before the CRTC, the latter was not a party in this first
instance; it was the adjudicative body. Furthermore, it is not a person who, in
the appeal, has interests adverse to those of the appellant. In fact, the appellant
should not have made the CRTC a respondent in its proceedings…
[65] Irrespective of the reasons that led
the appellant to name the CRTC as respondent on appeal, this act was a source
of confusion since, as a general rule, the rights of a respondent on appeal are
different from and much more extensive than those of an intervener. Failing a
statutory exemption, as in the case of the Canada Industrial Relations Board
(see subsection 22(1.1) [as enacted by S.C. 1998, c. 26, s. 9] of the Canada
Labour Code, R.S.C., 1985, c. L-2), a body whose decision is attacked is
not entitled to appear in the appeal or review proceedings. Were it not for the
fact that it was implicated as a party to the appeal by the appellant, the CRTC
would have had to make a motion for leave to intervene under section 109 of the
Rules. Its status would then have been clear and spelled out in the order
authorizing it to intervene, as was the case for the interveners Cogeco
Diffusion Inc., the Canadian Association of Broadcasters, the Association
québécoise de l'industrie du disque, du spectacle et de la vidéo and the
Canadian Civil Liberties Association.
[66] Whether in judicial review or appeal
proceedings, the federal agency that made a decision is not authorized to come
and defend the decision it made, still less to justify itself. As Mr. Justice
Estey said in Northwestern Utilities Ltd. et al. v. City of Edmonton,
1978 CanLII 17 (SCC), [1979] 1 S.C.R. 684, at page 709 (where the agency had
presented on appeal detailed and elaborate arguments in support of its
decision), "[s]uch active and even aggressive participation can have no
other effect than to discredit the impartiality of an administrative tribunal
either in the case where the matter is referred back to it, or in future proceedings
involving similar interests and issues or the same parties." The agency is
entitled to be represented on appeal, but its submissions must in principle be
limited to an explanation of its jurisdiction, its procedures and the way in
which they unfolded.
[47]
Similarly, in Maple Leaf Foods, above,
Justice Sharlow of the Federal Court of Appeal found that the Registrar of
Trade-Marks should not have been named a respondent in that proceeding because,
as the statutory decision-maker, it was not adverse in interest to Maple Leaf.
Rule 338 justified an order removing the Registrar as a party to the appeal
(also see Genencor International, Inc v Canada (Commissioner of Patents),
2006 FC 876 at para 38, 52 CPR (4th) 253, rev’d on other grounds, 2006 FC 1021
[Genencor]).
[48]
Based on this, it is clear that the Commissioner
is not a party in the first instance who is adverse in interest to the
Appellant pursuant to Rule 338(1)(a). As to Rule 338(1)(b), there is no
requirement in the Act to name the Commissioner as a party.
[49]
I also do not find the remainder of the
Appellant’s submissions on this issue to be compelling. This included a
Federal Court index and docket search for “Minister of Health” which turned up
711 results from 2003 to 2012. The Appellant acknowledges that the vast
majority of these are under the PM (NOC) Regulations but states that others are
applications, only two of which are specified and are said to concern access to
information. I do not see how this or Pfizer, above, assists the
Appellant, particularly as an applicant is required to name as a respondent
every person directly affected by the order sought, other than a tribunal in
respect of which the application is brought. Thus, a tribunal could be a named
party in capacities other than as a decision-maker. The Appellant similarly
included a query search of “Commissioner of Patents” that located 248 records
between 1971 and 2012. Not all of these are s. 41 of the Patent Act appeals.
Further, in the three cases from this search result which are addressed by the
Appellant, Dutch Industries, Amazon, and Harvard College, all above, the issue of the Commissioner being named as a party does not appear to
have been disputed.
[50]
I also do not agree with the Appellant’s
assertion that, when this Court quashes a decision and directs the matter back
for redetermination, the tribunal is not bound to follow any direction of the
Court that may be included in its decision if it is not a named party. This is
certainly not reflected in Rules 303 and 338.
[51]
Finally, I would note that nothing in Rule 317,
which pursuant to Rule 350 applies to appeals, requires that the tribunal whose
order is the subject of the application or appeal to be named as a respondent
in order to compel production by an applicant or appellant of the materials in
its possession relevant to that proceeding.
[52]
Therefore, pursuant to Rule 338(1)(c), the AGC
should, in the circumstance of this matter, be the named Respondent on this
appeal. Accordingly, it is hereby ordered that the Commissioner is removed as
a named respondent and the style of cause shall be amended accordingly.
ISSUE 2: What weight, if
any, should this Court afford to the Appellant’s new evidence concerning the marking
his application as being “dead” by CIPO?
[53]
The Appellant brought a motion before this Court
on August 16, 2013, seeking to bring new evidence in the form of affidavits
dated August 15 and September 6, 2013 from Keith Bird, a lawyer and a patent
agent who was involved in the Appellant’s application, and an affidavit dated September
3, 2013 from Julie Tomaselli, Legal Assistant at the Department of Justice.
[54]
By Order dated September 19, 2013, Prothonotary
Aalto granted the motion to adduce new evidence on appeal. He found that the
evidence appeared to be germane to the underlying appeal and should be before
the hearings judge who would be in the best position to determine its
relevance.
[55]
The essence of this new affidavit evidence is
that CIPO, in its Canadian Patents Database, has recorded the Patent
Application as a “dead” application as of March 21, 2012, and recorded the
maintenance fees as having been paid only to the thirteenth anniversary.
Although payments for the fourteenth and fifteenth anniversary maintenance fees
and the fee for reinstating the appeal have been made, due to a 2009 change in
CIPO procedure, the application will continue to be recorded as “dead” until
the current appeal is resolved. At that time, the fees held on file will
either be applied or refunded. The CIPO Techsource-Patent Administration electronic
file concerning the subject Patent Application includes changes made to explain
the “dead” status, including that the case is under appeal, and advising that
maintenance fees paid after March 21, 2012 would be processed after the appeals
are exhausted if the refusal is reversed.
[56]
However, the information available online to the
general public by way of the Canadian Patents Database is not identical to that
which can be obtained from the Techsource terminals available at CIPO’s
offices. A printout from the latter source lists the current state of the Patent
Application as “Dead” and that it was dead on: “2012/03/21 for COMMISSIONER’S
DECISION TO REFUSE.” The attached log includes reference to and copies of the
letter written by counsel for the Appellant to the Commissioner concerning this
issue and the Commissioner’s reply explaining what is meant by “dead” and other
related matters. The fourteenth anniversary maintenance fee is shown in the
log as having been recorded on November 20, 2012, however, it is not displayed
as paid. There is no record of the fifteenth maintenance fee. The most recent
online version of the Canadian Patents Database has not been revised to reflect
the explanations available in Techsourse.
Respondent’s Position
[57]
The Respondent submits that the Commissioner’s
decisions regarding administration of the patent registrar are subject to a
separate judicial review application and do not properly form part of the
appeal under the Act for relief following a refusal. The term “dead” does not
appear in the Act or the Patent Rules, SOR/96-423 [Patent Rules],
it is an administrative designation only and CIPO has taken steps to ensure
that the public record clearly indicates that an appeal from the refusal is
pending. The recording of a refused patent application as “dead” is not
evidence necessary to decide this appeal from the Commissioner’s decision
refusing the Patent Application on the grounds that the claimed invention is
obvious.
Appellant’s Position
[58]
In his Supplementary Memorandum of Fact and Law,
the Appellant submits that the Commissioner had no statutory basis to record
the Patent Application as “dead” upon refusing the Patent Application. In the
event that this Court determines that the Commissioner erred in refusing to
allow the application on the grounds of obviousness, the Court has the power to
direct the Commissioner to take such steps as will be required to put the
Patent Application into good standing and to properly record the payment of the
maintenance fees. Further, that the Commissioner failed to treat the Appellant
fairly in accordance with the procedures authorized by the Act and the Patent
Rules. The new evidence makes it clear that CIPO will not recognize any
mistake in relation to the Patent Application but will instead try to change
the basis upon which it seeks to justify the action said to be a mistake.
Analysis
[59]
The Act does not use the term “dead,” nor is the
term used in the Patent Rules. The Appellant provided, by way of an
exhibit to the September 6, 2012 Bird affidavit, a print out from the Canadian
Patents Database entitled “Help: Administrative Status Definitions.” This
describes a dead application as the date that an abandoned application could
normally no longer be reinstated.
[60]
The Appellant does not assert any specific
prejudice suffered as a result of the Canadian Patents Database depiction of
the Patent Application as being dead. Although he asserts that this evidence
shows that the Commissioner has failed to treat the Appellant fairly in
accordance with procedures authorized by the Act or the Patent Rules, he
makes no legal argument in support of that claim such that it is a basis for
quashing the Commissioner’s decision. Moreover, the remedy that the Appellant
seeks as regard to the new evidence is an order to correct the designation of
the Patent Application as dead and to properly record all transactions that
were not recorded after the designation of the Application as dead, including
the payments of maintenance fees.
[61]
Additionally, the new evidence does not support
the Appellant’s assertion that CIPO will not recognize any mistake made in
relation to the Patent Application but will instead try to change the basis
upon which it seeks to justify the impugned action. In fact, the August 29, 2013,
letter from CIPO explaining why the Patent Application was marked as dead and
what steps it would take to address the Appellant’s concerns suggests the
contrary. Further, this issue pertains to the administration of the Patent
register.
[62]
I am also of the view that the recording of a
refused Patent Application as “dead” is not evidence necessary to decide this
appeal from the Commissioner’s decision refusing the application on the ground
that the claimed invention is obvious.
[63]
For these reasons, the new evidence is relevant
only to the limited extent that it grounds that portion the Appellant’s request
for relief pertaining to the revisiting of the designation of the status of the
Patent Application in the event that its appeal is successful, which presumably,
CIPO would do of its own accord. However, as I have determined below that the
appeal cannot succeed, this new evidence has no relevance.
ISSUE 3: What is the standard of review?
Appellant’s Submissions
[64]
The Appellant does not make submissions as to the
standard of review in this appeal, but states that the Commissioner misapplied
the correct legal principles.
Respondent’s Submissions
[65]
The Respondent submits that, in Blair 2,
above, Justice Mactavish previously determined that identifying the legal test for
obviousness is reviewable on a correctness standard and that the Commissioner
correctly identified the test, including the refinement to the Beloit test arising from the Sanofi framework and the decision in Janssen,
all above. Further, that once the legal test had been correctly identified,
the Commissioner’s finding of obviousness is then reviewed on a reasonableness
standard.
[66]
The Commissioner has a “special expertise” and
the legal questions involved in this case are within that area of expertise attracting
deference (Harvard College, above, at paras 149, 151). In Genencor,
above, Justice Gibson applied the reasonableness standard to questions of law
involving claims construction and anticipation, legal issues which he
determined were within the expertise of the Commissioner and the Patent
Officer.
[67]
A finding of obviousness is a question of fact
that is not to be interfered with on appeal unless a manifest error was made in
weighing the evidence and should only be overturned if the Commissioner’s decision
was found to be unreasonable (Créations 2000 Inc v Canper Industrial
Products Ltd, [1990] FCJ No 1029 (QL) at 5, 34 CPR (3d) 178 (CA) [Créations
2000]; Halford v Seed Hawk Inc, 2006 FCA 275 at para 39, 275 DLR
(4th) 556 [Halford]; Genencor, above; Procter & Gamble Co
v Beecham Canada Ltd (1982), 61 CPR (2d) 1 at 6, 19-20 (FCA) leave to
appeal to SCC refused 43 NR 263).
[68]
The Respondent submits that the Appellant
confuses the identification of the correct legal test with its application to
the evidence.
Analysis
[69]
A standard of review analysis need not be
conducted in every instance. Instead, where the standard of review applicable
to a particular question before the court is well-settled by past
jurisprudence, the reviewing court may adopt that standard (Dunsmuir v New Brunswick, 2008 SCC 9, [2008] 1 S.C.R. 190 at paras 57, 62 [Dunsmuir]; Kisana
v Canada (Minister of Citizenship and Immigration), 2009 FCA 189 at para
18).
[70]
The standard of review analysis and
determinations by Justice Mactavish in the second appeal of this matter are
equally applicable in this instance. She agreed with the parties that the
identification of the legal test for obviousness is reviewable on the standard
of correctness (Halford, above, at para 39; CertainTeed Corp v
Canada (Attorney General), 2006 FC 436 at paras 23-27, 289 FTR 312) and
that the correct test had been applied. On this third appeal, the parties do
not take issue with the correct legal test for obviousness.
[71]
Justice Mactavish went on to find that:
[51] Indeed, it appears that what Mr.
Blair really takes issue with is the way in which the Commissioner applied the
legal test for obviousness to the facts of this case. This involves a question
of mixed fact and law. In light of both the factual component of the inquiry and
the expertise of the Commissioner, this aspect of the Commissioner’s decision
is entitled to deference. While recognizing that this case involves an appeal,
as opposed to an application for judicial review, I nevertheless find the
standard of review to be applied to the Commissioner’s finding of obviousness
to be that of reasonableness: see Scott Paper Ltd v. Canada (Attorney
General), 2008 FCA 129, 65 C.P.R. (4th) 303 at para. 11.
[72]
Similarly, in this third appeal the Appellant
submits that the primary concern with the Commissioner’s decision is “not that he has applied the wrong principles, but that he has
misapplied the correct principles.” Thus, as the Appellant contests the
Commissioner’s treatment and assessment of the evidence, the standard of review
is reasonableness.
ISSUE 4: Did the Commissioner err in finding the
Appellant’s proposed invention obvious?
Appellant’s Submissions
[73]
The Appellant essentially advances four
submissions being that the Commissioner: (i) did not apply the specific
directions of Justice Mactavish; (ii) analyzed the elements of the claims
separately instead of analyzing the combination of those elements as a whole;
(iii) did not fairly consider his evidence; and (iv) used the “trend in the
art” as a retrospective exercise to explain away gaps in the prior art.
[74]
The Appellant submits that the Commissioner
failed to follow Justice Mactavish’s direction to consider the Morris
affidavit. Instead, the Commissioner joined the Morris evidence together with
that of Gillespie, Wilkins, Berry and Gibson and essentially dismissed it as
speaking to novelty, assisting only in identifying differences over the state
of the art. Further, the Commissioner failed to consider the Morris evidence
that the four subway video systems installed after the priority date of the
Patent Application, in subway cars substantially identical to the TTC subway
cars discussed in the Application, did not arrive at the combination of
elements claimed by the Appellant’s invention that the Commission found to be obvious
in light of the trend in the art.
[75]
The Appellant submits that the Commissioner also
failed to follow Justice Mactavish’s directions not to characterize the
invention as a series of parts because the invention lies in the fact that they
were put together. While the Commissioner states that he considered the
combination as a whole and found it to be novel, he then goes on to consider
the elements individually when considering the question of obviousness. The
Commissioner did not properly consider the Morris evidence and, if the
combination in the application is obvious, some explanation must be provided to
demonstrate why four other subsequent attempts did not arrive at that
combination. Common knowledge and the prior art relied on by the Commissioner would
not have led a person skilled in the art directly and without difficulty to the
solution taught by the proposed patent (Donald H. MacOdrum, Fox on the
Canadian Law of Patents (Toronto, ON: Carswell, 2013) at section 4:17(e); Bridgeview
Manufacturing Inc v 931409 Alberta Ltd, 2010 FCA 188 at paras 47, 51-52, 87
CPR (4th) 195 [Bridgeview]). Further, that the Patent Application was
not considered by a mind willing to understand, but by a mind desirous of
misunderstanding the invention.
[76]
The Appellant submits that the Commissioner did
not fairly consider the Appellant’s evidence as he considered it only after
arriving at his conclusion based on his own reading of the prior art. This
approach is improper (Phillips v Ford Motor Company of Canada Ltd, [1971]
2 OR 637 at 657, 18 DLR (3d) 641 (CA)).
[77]
Finally, the Appellant submits that the
Commissioner erred in analyzing the “trend in the art” because he failed to
consider the Morris evidence concerning four subway systems using subway cars
substantially similar to those of the TTC that have installed video systems
following to priority date, not one of which showed all the elements of the
Appellant’s combination. The Commissioner’s reliance on the predictive power
of the “trend in the art” to dismiss the Patent Application is inexplicable
given this evidence. In this case the “trend in the art” completely failed to
predict how video systems would be installed in subway systems.
Respondent’s Submissions
[78]
The Respondent first makes submissions on the
legal test for obviousness. It states that the parties agree on the test, that
is, in deciding whether the claimed invention is obvious the Court is to
consider the relevant prior art and what common general knowledge should be
imputed to the skilled technician (Wellcome Foundation Ltd v Novopharm Ltd (1998),
82 CPR (3d) 129, 151 FTR 47 (TD), aff’d (2000), 7 CPR (4th) 330 (FCA) [Wellcome]).
[79]
The Respondent refers to the supplemental legal
test for obviousness in Sanofi, above, requiring a flexible, informed
approach to obviousness and recognizing that no single expression of the test
to answer the question “is it obvious” will fit all circumstances. The
Respondent agrees that the Beloit test does not require that every
aspect of the claimed invention be explicitly disclosed by prior art. However,
it submits that in order to assess whether the invention as a whole would have
been obvious, it is necessary to determine whether what is actually claimed
would have been obvious. This involves looking at the claimed features which
constitute the changes made by the Appellant to the prior art to determine
whether these changes would have resulted in a combination to which the skilled
person would have come to directly and without difficulty, keeping in mind the
state of the art and common general knowledge which would have been possessed
by such a person at the applicable date (Wellcome, above). This is the
analysis that was correctly undertaken by the Commissioner.
[80]
The Respondent submits that the Appellant brings
the test for obviousness too close to the test for anticipation which may
render section 28.3 of the Act meaningless. Anticipation suggests that “the
invention although clever was already known” while obviousness suggests that
“any fool could have done that.” Prior art that is insufficient for
anticipation may be sufficient for obviousness (Créations 2000, above,
at 3-4).
[81]
The Respondent submits that the Commissioner
considered all the evidence including the Morris affidavit and found that the
experts offered a limited explanation for their conclusion on obviousness. Morris
is a transit signal specialist and does not represent the POSITA, a person
familiar with installing video systems. Therefore, the Commissioner looked at
the Ballantyne affidavit, which was not before Justice Mactavish, to determine
whether the location for mounting the monitor required ingenuity or was just a
part of the common general knowledge possessed by the POSITA. It found that
Ballantyne’s evidence established that selecting the video monitor location and
mounting means is left to judgment based on ordinary skill. This determination
followed a consideration of the Morris affidavit and POSITA evidence and is a
factual finding within the expertise of the Commissioner which is entitled to
deference.
[82]
The Respondent submits that Justice Mactavish
identified the POSITA and that the Commissioner invited the Appellant to
provide additional evidence relating to the POSITA which evidence was duly
considered by the Commissioner.
[83]
The Respondent submits that it is not an error
to examine the elements separately as long as the combination is assessed as a
whole. Bridgeview, above, did not instruct that the elements not be
separately looked at, but that it is incorrect to jump to a conclusion of
obviousness solely on account of the individual elements being well known. Similarly
in Sanofi, above, the Court looked at the separate claims to identify
differences from the prior art and asked if those differences constitute steps
that would have been obvious.
[84]
The Respondent submits that the Commissioner
examined the elements of the claim and also the elements as a whole. It
reviewed each of the prior art and then agreed with the Appellant that none of
them taught the inventive concept of the combination of the elements as a whole
contained in the application. However, the fact that the claimed subject
matter was novel does not necessarily mean that the differences displayed
ingenuity. The Commissioner turned his mind to indicators of ingenuity such as
surprising result, commercial success, a long felt want, selection of an
advantageous variant from among all options, and, simplification of a device
but found no such indicators. The Commissioner also noted that the Appellant
acknowledged a trend in the cited art of installing video systems to entertain
and/or inform passengers in a variety of transportation systems.
[85]
The Respondent submits that the Appellant
himself distinguished his proposed invention from the prior art on the basis of
a review of an element, location, looked at separately. The Commissioner’s
finding of obviousness was not arrived at by finding each element to be
well-known. Rather, because the Appellant touted certain benefits of certain
features and distinguished the prior art by pointing to certain isolated
features, this made it necessary for the Commissioner to address whether those
features imparted ingenuity. The Appellant’s own specification suggests that it
was within the skill of the POSITA to assess each installation situation and select
a suitable location for the monitors. Therefore, it was open to the
Commissioner to look at the combination in light of TTC subways that had “long
ago” selected the location being taught in the Patent Application for print ads
and to conclude that it did not disclose ingenuity.
[86]
Whether there is a “mere scintilla” of
inventiveness is a finding of fact to be arrived at after examining all the
evidence, including the prior art and, if deemed necessary by the Commissioner,
expert evidence. These are within the Commissioner’s expertise and are
entitled to deference. The Commissioner can dismiss an expert opinion on
obviousness in the absence of supporting analysis where the opinion amounts to
“little more than a bare conclusion” (Bridgeview, above, at paras 52,
85).
Analysis
[87]
Section 28.3 of the Act states that the
subject-matter defined by a claim in an application for a patent in Canada must
be subject-matter that would not have been obvious on the claim date to a
person skilled in the art or science to which it pertains, having regard to the
provisions set in that section.
[88]
Justice Hugessen in Beloit, above, at
page 294, stated that “[t]he classical touchstone for
obviousness is the technician skilled in the art but having no scintilla of
inventiveness or imagination,” and whether the person so described “…would, in the light of the state of the art and of common
general knowledge as at the claimed date of invention, have come directly and
without difficulty to the solution taught by the patent.”
[89]
In Sanofi, above, at para 67, the Supreme
Court restated the Canadian framework for assessing obviousness and adopted a
four step guide for analysis with a view to inserting greater flexibility into
this aspect of Canadian patent law:
1. (a) Identify the notional “person skilled in the art”;
(b) Identify the
relevant common general knowledge of that person;
2. Identify the inventive concept of the claim in question or if that
cannot readily be done, construe it;
3. Identify what, if any, differences exist between the matter cited as
forming part of the “state of the art” and the inventive concept of the claim
or the claim as construed;
4. Viewed without any knowledge of the alleged invention as claimed, do
those differences constitute steps which would have been obvious to the person
skilled in the art or do they require any degree of invention? […]
[90]
At the fourth step, an “obvious to try” may
arise, which is but one fact that can be considered in a more expansive
consideration of obviousness.
[91]
In this case, it does not appear to be disputed
that the Commissioner applied the correct test for obviousness to the claimed
invention. Rather, the Appellant claims that the Commissioner misapplied the
correct principles and that attention should be focused not on what the Commissioner
says he is doing but on what he actually does. In other words, the Appellant
disputes the application of that test.
i)
Direction of Justice Mactavish – Morris
Affidavit
[92]
The Appellant submits that the Commissioner did
not follow Justice Mactavish’s direction to consider the Morris affidavit. Having
admitted it as fresh evidence on the Appellant’s appeal, Justice Mactavish
found the Morris affidavit to be probative insofar as it demonstrates that no
one else has thought to install video cameras in subway cars in the location
identified by the Appellant. The Morris evidence also directly contradicted
the Commissioner’s finding in the first decision that the junction of the ceiling
and sidewall is the “logical location, indeed perhaps the
only available location” in which to install a video screen. She stated
that the Morris evidence “may have a bearing on the
question of obviousness and which should be considered.” Therefore, the
Commissioner, on the third appeal, was required to consider this evidence.
[93]
In his affidavit Mr. Morris states that he is a
railway and transit signal specialist. He attests that the subway video system
in four cities, Beijing, Sao Paulo, Shanghai and Seoul, do not contain a
combination of elements as indicated in claim 1. He opines that it would not
have been obvious on the claim date to combine the particular components that
form the elements of claim 1 to create a video display system for a subway and
that this is supported by the fact that between 2000 and 2007 several variations
of video display systems have been created and installed but none of them have
all of the claim 1 elements.
[94]
In my view, the Commissioner did consider the
Morris affidavit and therefore complied with Justice Mactavish’s directions.
He specifically referenced it at paragraphs 8 and 72 of his decision. Further,
in paragraph 79 he noted that the affidavit includes exhibits comprised of
photographs of various subway cars from around the world which show that the
cars have video monitors installed in locations other than the ones claimed in
the Patent Application. And, in paragraph 80, with respect to the Morris
affidavit, he agreed with the Appellant that, contrary to the comment in the
Commissioner’s first decision, there are locations other than the wall-ceiling
junction where monitors may be installed in subway cars. This specifically
addresses the points raised by Justice Mactavish in regard to the Morris
affidavit. Further, at paragraph 81 the Commissioner considered the Morris
affidavit together with the Gillespie, Wilkins, Berry and Gibson evidence which
he found to speak to the novelty of the invention but to only assist the
obviousness analysis to the point of step 3 – identifying the differences over
the state of the art. The Commissioner also agreed with those experts that the
invention differs from the state of the art. However, he found that until step
4 the obviousness assessment was not complete and that their evidence provided
little assistance in addressing that question. Finally, at paragraph 82, the
Commissioner found that while Gibson, Wilkins and Morris offered their opinions
that the claim was not obvious, they offered a limited explanation for that
conclusion and did not persuade the Commissioner that any ingenuity would have
been required to arrive at the inventive concept.
[95]
Morris’ area of expertise was as a railway and
transit signal specialist, he did not claim any expertise in the installation
of video display systems. With respect to video monitor placement, in step
1(b) of his analysis the Commissioner determined, based on the description in
the Patent Application, that the selection of the location and mounting means
was left to judgment based on ordinary skill indicating that selecting a
suitable location for monitor installation based on certain parameters was
routine skill at the relevant date. Further, that this was consistent with the
Ballantyne affidavit. It is of note that the Ballantyne affidavit was not
before Justice Mactavish and was submitted as new POSITA evidence by the
Appellant as an expert in the field of video installation together with the
DiNardo and Ng affidavits.
[96]
At paragraphs 58-61 of his decision the
Commissioner specifically considered monitor placement and, in accordance with
his findings on common general knowledge, stated that monitor placement based
on given parameters is a matter of ordinary skill and therefore is not in
itself inventive.
[97]
Accordingly, to the extent that it addressed the
location at which video monitors would be installed, the Morris evidence was
fully addressed by the Commissioner who, reasonably, placed greater weight on
the Ballantyne affidavit and the ordinary skill of the POSITA, in concluding
placement did not involve any inventive step.
ii)
Direction of Justice Mactavish – characterization
of combination as a whole
[98]
The Appellant also submits that the Commissioner
failed to follow the direction of Justice Mactavish not to characterize the
invention as a series of parts because the invention lies in the fact that they
were put together. Instead, the Commissioner analyzed the ingenuity connected
with the choice of the elements individually.
[99]
Justice Mactavish found that in the second
decision the Commissioner had erred in her application of the obviousness test
by separately considering each element of the first claim, on its own, in order
to determine whether that element was obvious, rather than considering the
claim as a whole. Further, that it was evident from claim 1 and its seven
essential elements that the invention claimed by the Appellant involved a
combination of constituent elements, some of which were already known.
Therefore, where a claimed invention lies in the combination of elements, “it is not permissible to characterize the invention as a
series of parts because the invention lies in the fact that they were put
together” (Omark, above).
[100] In that regard, in Bridgeview, above, at para 51, the Federal
Court of Appeal stated the following:
[51] I agree with Bridgeview that the 334
patent discloses a combination invention. It is not fair to a person claiming
to have invented a combination invention to break the combination down into its
parts and find that, because each part is well known, the combination is
necessarily obvious: see, for example, Stiga Aktiebolag v. S.L.M. Canada
Inc. reflex, (1990), 34 C.P.R. (3d) 216 at page 245 (F.C.T.D.), which
quotes this passage from Wood & Amcolite Ltd. v. Gowshall Ltd.
(1936), 54 R.P.C. 37 at page 40 (per Greene L.J.):
The dissection of a combination into its
constituent elements and the examination of each element in order to see
whether its use is obvious or not is, in our view, a method which ought to be
applied with great caution since it tends to obscure the fact that the
invention claimed is the combination. Moreover, this method also tends to
obscure the facts that the conception of the combination is what normally
governs and precedes the selection of the elements of which it is composed and
that the obviousness or otherwise of each act of selection must in general be
examined in the light of this consideration. The real and ultimate question is
"Is the combination obvious or not?”
[101] However, the Commissioner did not repeat that error. He
appropriately analyzed the proposed invention both as individual parts and as a
whole and reasonably concluded that while it was a novel proposal, there was no
inventive step in putting the elements together.
[102] The Commissioner explicitly acknowledged the Appellant’s submission
that the inventive concept is a combination of essential elements as construed
by Justice Mactavish and agreed to proceed on that basis. Further, that it was
appropriate to take into account the essential elements as set out in Bridgeview,
above.
[103] At step 3 of the analysis, the Commissioner noted that none of the
cited prior art references taught the inventive concept (e.g. the combination)
as a whole. The Commission accepted that the difference between the inventive
concept and the state of the art is the combination of elements.
[104] At step 4, the Commissioner noted that, having found that the
combination as a whole is not found in the prior art, it was to be emphasized
that although it does not necessarily follow that the difference required some
degree of ingenuity.
[105] That is correct; novelty and utility are not the only requirements
of patentability. The invention also requires ingenuity. This is expressed
well in Canadian Gypsum Co v Gypsum, Lime & Alabastine Canada Ltd,
[1931] Ex CR 180 at 187:
To support a valid patent there must be
something more than a new and useful manufacture, it must have involved somehow
the application of the inventive mind: the invention must have required for its
evolution some amount of ingenuity to constitute subject matter, or in other
words invention.
[106] The Commissioner identified factors such as surprising results,
commercial success, addressing a long felt want, selection of an advantageous
variant among all options and simplification of a device as factors suggestive
of ingenuity. He found no such indicators in this case. Rather, the difference
over the state of the art appeared to be consistent with the trend shown in the
prior art and required only ordinary skill to implement. Taken as a whole, the
cited art showed a trend of installing video systems to entertain and/or inform
passengers in a variety of transportation systems. In particular, Doigan,
addressed the problem of entertaining passengers on short journeys or during
waits and in “light rail horizontal people movers”
which the Commissioner interpreted as including subways. Given this trend, it
found that no inventive ingenuity would have been involved in choosing to
install a video system in a subway car.
[107] However, having followed the trend in the art by deciding to install
a video system in a subway car, it was also important to consider if an
inventive step would have been involved in designing the particular
implementation claimed. It was in this context that the Commissioner
considered the individual element of monitor placement. As set out above, the
Commissioner found that monitor placement was within the parameters of ordinary
skill and, therefore, was not in and of itself inventive and that the POSITA is
adept at taking into account the factors necessary to situate a video monitor
including intended use, orientation of users, obstacles, etc.
[108] The Commissioner also noted that the Appellant’s description appeared
to place little significance on the claimed location, and the cited references
in the description support that finding. He concluded that there was no
ingenuity in selecting the wall-ceiling junction in a subway car for
installation of video monitors. The Commissioner then noted that although the
Appellant did not emphasize the remaining essential elements in his submissions,
the Commissioner considered them for completeness because “they are part of the claimed combination.” He found
that the provision of multiple, spaced monitors angled for viewership, and the
combination of including a video, both flow from the ordinary skill of the
POSITA and that the flush mounting feature was aesthetic. He concluded that
these elements, when taken in combination with the other claimed elements, did
not establish an inventive step.
[109] In my view, the Commissioner in his decision did not dissect the
combination into its constituent elements and examine each element to see
whether its use was obvious or not. Rather, he considered the combination as a
whole, identified the differences from the prior art, and simply asked whether
those differences required any degree of invention as required by Sanofi,
above, at para 67.
iii)
Commissioner’s consideration of the evidence
[110] The Appellant submits that the Commissioner did not fairly consider
his evidence as he considered it only after arriving at his conclusion on
obviousness based on his own reading of the prior art. The Appellant submits
that this approach is improper as the function of evidence is to inform the
Commissioner’s decision-making process, not to persuade him after the fact to
alter a preconception.
[111] In my view, the Appellant seeks to have the evidence reweighed. In
paragraph 37 of his decision the Commissioner sets out the prior art documents
that had been examined and then notes that the Appellant’s experts, Ballantyne,
Ng and DiNardo, had provided the Commissioner with their understanding of the
prior art. The Commissioner stated that he generally agreed with their
characterization, with the exception of their construction of the expression “light rail horizontal people mover” in Doigan as not
including subways, which the Commissioner then addressed. This clearly
suggests that the prior art was considered in the context of the Appellant’s
expert evidence and before to the more specific consideration of the expert
evidence at paragraphs 71-83.
[112] There, the Commissioner states that he could not draw a conclusion
about obviousness without ensuring that all the evidence was considered. The
Commissioner found that the evidence of Ballantyne, Ng and DiNardo did not
address whether the inventive concept involved an inventive step. On my review
of their affidavits, this was a finding reasonably open to the Commissioner. Ballantyne
does not specifically identify an inventive step, but states that the proposed
invention is novel and that the combination of elements in claim 1 would not
have been obvious to a POSITA. Ng and DiNardo simply agree with Ballantyne’s
conclusion.
[113] After examining this evidence, the Commissioner also concluded that
the Morris evidence together with that of Gillespie, Wilkins, Berry and Gibson
spoke to novelty and assisted in identifying the differences over the state of
the art but offered limited explanation for their conclusion on obviousness.
[114] While the Commissioner’s choice of words, being that having
considered the totality of the evidence from the Appellant his finding of
obviousness “remains unchanged,” may have been less than ideal, it is apparent
from the decision that the evidence submitted by the Appellant was considered
and weighed by the Commissioner in reaching his ultimate decision and not
simply as an afterthought.
iv)
Commissioner’s use of trend in the art
[115] The Appellant also submits that the Commissioner’s use of “trend in
the art” was a retrospective exercise to explain away gaps in the prior art. More
specifically, that the Commissioner failed to consider the Morris evidence
concerning the four subways systems which had installed video systems after the
priority date and none of which showed all of the elements of the Appellant’s
claimed combination. Thus, the trend in the art failed to predict how video
systems would be installed in subway systems. In essence, the Appellant relies
on what he terms the “subsequent” art, being the Morris affidavit, to attack
the Commissioner’s trend in the art analysis.
[116] The Commissioner found that, taken as a whole, the cited prior art of
Doigan, Comerzan-Sorin and Tagawa shows a trend of installing video systems to
entertain and/or inform passengers in a variety of transportation systems.
That trend was acknowledged by the Appellant in the specification where he describes
how various transportation means, other than subways, were being equipped with
video systems prior to the filing date. The Appellant explained that subways
had been ignored because of the relatively short journey experienced by
passengers. The Commissioner found that this was consistent with
Comerzan-Sorin and Tagawa.
[117] He found that the Doigan patent addresses the problem of
entertaining passengers on short journeys or during waits. Further, based on
his interpretation of “light rail horizontal people movers” in Doigan as
including subways, it directly teaches the provision of video systems on
subways, or the like, to entertain passengers. Thus, regardless of whether the
step in extending the trend in long haul transportation to subways was inventive,
Doigan had taken that step before the relevant date.
[118] However, the Commissioner also considered whether, having followed
the trend in deciding to install a video system in a subway car, there was an
inventive step involved in designing the particular implementation claimed by
the Appellant. Having done so, the Commissioner concluded that the remaining
elements, including the flush mounting feature, when taken in combination with
the other claimed elements, did not establish an inventive step. Thus, the
technical consideration of them did not indicate the requisite ingenuity to
sustain a patent for the claimed combination. The Commissioner recognized,
however, that a conclusion on obviousness could not be drawn without ensuring
that the totality of the evidence submitted by the Appellant was considered and
proceeded with his review of the affidavit and other expert evidence.
[119] It is true that in the section of the decision considering the trend
in the prior art in deciding to install a video system on a subway and whether
there was an inventive step in designing the Appellant’s claimed
implementation, the Commissioner did not refer to the Morris evidence.
However, the Morris affidavit was not prior art nor did it consider the prior
art. Further, when considering the expert evidence, the Commissioner
specifically referred to the Morris evidence, including that video monitors had
been installed in other subway cars internationally. Thus, the Commissioner
did not overlook that evidence.
[120] It is also true that the Commissioner only explicitly considers the
Morris evidence with respect to one element of the claim, video monitor
installation locations, and not in the context of the combination of the other
elements of the Appellant’s proposed invention even though Morris attests that
the subways video monitor systems in four other cities do not contain a
combination of elements as indicated in claim 1.
[121] However, the Commissioner found that while the Morris evidence spoke
to novelty it assisted him only to the point of identifying the differences
over the state of the art (step 3). In that regard, the Morris affidavit
states that it would not have been obvious to combine the components of claim
1. This conclusion was based on the fact that between 2000 and 2007 several
other variations of video display systems have been created and installed, none
of which have all of those elements. The Commissioner found that the Morris,
as well as the Gibson and Wilkins evidence, offered a limited explanation of
their conclusion on obviousness and did not persuade him that any ingenuity
would have been required to arrive at the inventive concept.
[122] In any event, and while I am doubtful of the validity of the use of
developments subsequent to the Patent Application to attack a trend in the
prior art analysis, here the Commissioner found that the trend was installing
video systems to entertain and/or inform passengers in a variety of
transportation systems. The “subsequent art” was entirely consistent with that
trend.
[123] In my view, the Appellant is challenging the weight given to this
expert evidence. However, the Commissioner’s decision is reviewed on a
reasonableness standard and the Court’s role is not to reweigh the evidence (Dunsmuir,
above).
Conclusion
[124]
A finding of obviousness is a question of mixed fact
and law that should only be overturned if the Commissioner’s decision was
unreasonable (Harvard College, above, at para 151; Amazon,
above, at para 19; Blair 2, above, at para 51; Halford, above, at
para 39; Dunsmuir, above, at para 53). Based on the foregoing, it is my
view that the Commissioner’s finding that the proposed invention was obvious
falls within a range of possible, acceptable outcomes which are defensible in
respect of the facts and law (Dunsmuir, above, at para 47).
[125] In any event, the Commissioner noted that he would have reached the
same conclusion based on his finding that the present claims merely involve the
step of substituting video monitors for the poster ads of the prior art.
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