Blair v. Canada (Attorney General), (2014) 463 F.T.R. 133 (FC)

• Judge: Strickland, J.
• Court: Federal Court (Canada)
• Case Date: March 25, 2014
• Jurisdiction: Canada (Federal)
• Citations: (2014), 463 F.T.R. 133 (FC);2014 FC 861

Blair v. Can. (A.G.) (2014), 463 F.T.R. 133 (FC)

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[French language version follows English language version]

[La version française vient à la suite de la version anglaise]

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Temp. Cite: [2014] F.T.R. TBEd. SE.032

Scott Blair (appellant) v. Attorney General of Canada (respondent)

(T-1745-12; 2014 FC 861; 2014 CF 861)

Indexed As: Blair v. Canada (Attorney General)

Federal Court

Strickland, J.

September 10, 2014.

Summary:

The Commissioner of Patents refused to grant a patent as requested by the appellant for the invention entitled "SUBWAY TV MEDIA SYSTEM" on the ground of obviousness. The appellant appealed the Commissioner's decision.

The Federal Court allowed the appeal and set aside the Commissioner's decision. The matter was remitted to the Commissioner for review on the issue of obviousness. The Commissioner again refused to grant a patent to the appellant on the ground of obviousness. The appellant appealed from the Commissioner's decision.

The Federal Court, in a decision reported at (2010), 364 F.T.R. 247, allowed the appeal, set aside the Commissioner's decision and returned the matter to the Commissioner for redetermination of the question of obviousness. In a decision dated March 21, 2012, the Commissioner refused to grant a patent on the ground of obviousness. The appellant appealed that decision pursuant to s. 41 of the Patent Act.

The Federal Court dismissed the appeal.

Administrative Law - Topic 8844

Boards and tribunals - Capacity or status - To appear on a statutory appeal when its decision is under review - [See Patents of Invention - Topic 881 ].

Patents of Invention - Topic 881

Application for grant - Appeals or judicial review - General - The Commissioner of Patents refused to grant a patent as requested by the appellant for the invention entitled "SUBWAY TV MEDIA SYSTEM" on the ground of obviousness - The appellant appealed the Commissioner's decision pursuant to s. 41 of the Patent Act - As a preliminary issue, the Attorney General of Canada (AGC) sought an order removing the Commissioner as a named respondent to the appeal - The Federal Court held that pursuant to rule 338(1)(c) of the Federal Courts Rules, the AGC should be the named respondent on this appeal - The court ordered that the Commissioner was removed as a named respondent and the style of cause should be amended accordingly - The Commissioner was not a party in the first instance who was adverse in interest to the appellant pursuant to rule 338(1)(a) - As to rule 338(1)(b), there was no requirement in the Act to name the Commissioner as a party - Nothing in rule 317 required that the tribunal whose order was the subject of the application or appeal be named as a respondent in order to compel production by an applicant or appellant of the materials in its possession relevant to the proceeding - See paragraphs 32 to 52.

Patents of Invention - Topic 883

Application for grant - Appeals or judicial review - Scope of appeal or standard of review - The Commissioner of Patents refused to grant the appellant a patent on the ground that the claimed invention was obvious - The appellant appealed the Commissioner's decision pursuant to s. 41 of the Patent Act - The Federal Court stated that "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" - See paragraphs 64 to 72.

Patents of Invention - Topic 884

Application for grant - Appeals or judicial review - Evidence - The Commissioner of Patents refused to grant the appellant a patent on the ground that the claimed invention was obvious - The appellant appealed pursuant to s. 41 of the Patent Act - The Federal Court considered what weight, if any, it should afford to the appellant's new evidence concerning the marking of his application as being "dead" by the Canadian Intellectual Property Office (CIPO) - The recording of a refused Patent Application as "dead" was not evidence necessary to decide the appeal from the Commissioner's decision - The new evidence was relevant only to the limited extent that it grounded that portion of 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 was successful - However, as the court had determined that the appeal could not succeed, this new evidence had no relevance - See paragraphs 53 to 63.

Patents of Invention - Topic 1582

Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - Test for obviousness - The Commissioner of Patents refused to grant a patent as requested by the appellant for the invention entitled "SUBWAY TV MEDIA SYSTEM" on the ground of obviousness - The appellant appealed - Mactavish, J., allowed the appeal, set aside the Commissioner's decision and returned the matter to the Commissioner for redetermination - The Commissioner refused to grant a patent on the ground of obviousness - The appellant appealed that decision - The appellant submitted that the Commissioner failed to follow the direction of Justice Mactavish not to characterize the invention as a series of parts because the invention lay in the fact that they were put together - The Federal Court stated that "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" - See paragraphs 98 to 109.

Patents of Invention - Topic 1589

Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - Particular patents - [See Patents of Invention - Topic 1593 ].

Patents of Invention - Topic 1590

Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - Evidence (incl. onus of proof) - The Commissioner of Patents refused to grant a patent as requested by the appellant for the invention entitled "SUBWAY TV MEDIA SYSTEM" on the ground of obviousness - The appellant appealed - Mactavish, J., allowed the appeal, set aside the Commissioner's decision and returned the matter to the Commissioner for redetermination - The Commissioner refused to grant a patent on the ground of obviousness - The appellant appealed that decision - The appellant submitted that the Commissioner did not follow Justice Mactavish's direction to consider the affidavit of Morris (a railway and transit signal specialist) - The Federal Court stated that "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. 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" - See paragraphs 92 to 97.

Patents of Invention - Topic 1590

Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - Evidence (incl. onus of proof) - The Commissioner of Patents refused to grant a patent as requested by the appellant for the invention entitled "SUBWAY TV MEDIA SYSTEM" on the ground of obviousness - The appellant appealed - The appellant submitted 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 submitted that this approach was improper as the function of evidence was to inform the Commissioner's decision-making process, not to persuade him after the fact to alter a preconception - The Federal Court stated that "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" - See paragraphs 110 to 114.

Patents of Invention - Topic 1593

Grounds of invalidity - Lack of "inventive ingenuity" (obviousness) - Prior art - The Commissioner of Patents refused to grant a patent as requested by the appellant for the invention entitled "SUBWAY TV MEDIA SYSTEM" on the ground of obviousness - The appellant appealed - The appellant submitted 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 evidence of Morris (a railway and transit signal specialist) 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 relied on what he termed the "subsequent" art, being the Morris affidavit, to attack the Commissioner's trend in the art analysis - The Federal Court dismissed the appeal - The court stated that "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" - Further, "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 ... 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" - See paragraphs 115 to 125.

Cases Noticed:

Omark Industries (1960) Ltd. v. Gouger Saw Chain Co., [1965] 1 Ex. C.R. 457; 45 C.P.R. 169, refd to. [para. 17].

Sanofi-Synthelabo Canada Inc. et al. v. Apotex Inc. et al., [2008] 3 S.C.R. 265; 381 N.R. 125; 2008 SCC 61, refd to. [para. 22].

Janssen-Ortho Inc. et al. v. Novopharm Ltd. (2007), 366 N.R. 290; 59 C.P.R.(4th) 116; 2007 FCA 217, refd to. [para. 27].

Beloit Canada Ltd. v. Valmet Oy (1986), 64 N.R. 287; 8 C.P.R.(3d) 289 (F.C.A.), refd to. [para. 27].

Maple Leaf Foods Inc. v. Consorzio Del Prosciutto Di Parma et al. (2010), 403 N.R. 118; 85 C.P.R.(4th) 451; 2010 FCA 67, refd to. [para. 33].

Genex Communications Inc. v. Canada (Attorney General) et al., [2006] 2 F.C.R. 199; 338 N.R. 268; 2005 FCA 283, consd. [para. 33].

Pfizer Canada Inc. et al. v. Canada (Minister of Health) et al., [2007] F.T.R. Uned. 118; 2007 FC 169, refd to. [para. 37].

Krause et al. v. Canada et al., [1999] 2 F.C.R. 476; 236 N.R. 317 (F.C.A.), refd to. [para. 38].

Dutch Industries Ltd. v. Commissioner of Patents et al., [2002] 1 F.C. 325; 209 F.T.R. 260; 2001 FCT 879, varied (2003), 301 N.R. 152; 2003 FCA 121, refd to. [para. 39].

Barton No-Till Disk Inc. v. Dutch Industries Ltd. - see Dutch Industries Ltd. v. Commissioner of Patents et al.

Amazon.com Inc. v. Canada (Attorney General), [2012] 2 F.C.R. 459; 423 N.R. 337; 2011 FCA 328, refd to. [para. 39].

Harvard College v. Commissioner of Patents, [2002] 4 S.C.R. 45; 296 N.R. 1, 2002 SCC 76, refd to. [para. 39].

Genencor International Inc. v. Commissioner of Patents et al. (2006), 296 F.T.R. 173; 52 C.P.R.(4th) 253; 2006 FC 876, revd. in part [2006] F.T.R. Uned. 591; 2006 FC 1021, refd to. [para. 47].

Créations 2000 Inc. et al. v. Canper Industrial Products Ltd. et al. (1990), 124 N.R. 161; 34 C.P.R.(3d) 178 (F.C.A.), refd to. [para. 67].

Halford et al. v. Seed Hawk Inc. et al. (2006), 353 N.R. 60; 275 D.L.R.(4th) 556; 2006 FCA 275, refd to. [para. 67].

Beecham Canada Ltd. et al. v. Proctor & Gamble Co. (1982), 40 N.R. 313; 61 C.P.R.(2d) 1 (F.C.A.), leave to appeal refused (1982), 43 N.R. 263 (S.C.C.), refd to. [para. 67].

New Brunswick (Board of Management) v. Dunsmuir, [2008] 1 S.C.R. 190; 372 N.R. 1; 329 N.B.R.(2d) 1; 844 A.P.R. 1; 2008 SCC 9, refd to. [para. 69].

Kisana v. Canada (Minister of Citizenship and Immigration) (2009), 392 N.R. 163; 2009 FCA 189, refd to. [para. 69].

CertainTeed Corp. v. Canada (Attorney General) et al. (2006), 289 F.T.R. 312; 2006 FC 436, refd to. [para. 70].

Bridgeview Manufacturing Inc. et al. v. 931409 Alberta Ltd. et al. (2010), 405 N.R. 32; 87 C.P.R.(4th) 195; 2010 FCA 188, refd to. [para. 75].

Phillips v. Ford Motor Co. of Canada Ltd., [1971] 2 O.R. 637; 18 D.L.R.(3d) 641 (C.A.), refd to. [para. 76].

Wellcome Foundation Ltd. et al. v. Novopharm Ltd. (1998), 151 F.T.R. 47; 82 C.P.R.(3d) 129 (T.D.), affd. (2000), 253 N.R. 297; 7 C.P.R.(4th) 330 (F.C.A.), refd to. [para. 78].

Canadian Gypsum Co. v. Gypsum, Lime & Alabastine Canada Ltd., [1931] Ex. C.R. 180, refd to. [para. 105].

Statutes Noticed:

Federal Courts Rules, rule 303 [para. 44]; rule 317 [para. 51]; rule 338(1) [para. 43].

Authors and Works Noticed:

Dussault, René, and Borgeat, Louis, Administrative Law: A Treatise (1990), vol. 4 [para. 38].

MacOdrum, Donald H., Fox on the Canadian Law of Patents (2013), s. 4:17(e) [para. 75].

Counsel:

Peter E.J. Wells, for the appellant;

Jacqueline Dais-Visca, for the respondent.

Solicitors of Record:

McMillan LLP, Toronto, Ontario, for the appellant;

William F. Pentney, Deputy Attorney General of Canada, Toronto, Ontario, for the respondent.

This appeal was heard on March 25, 2014, at Toronto, Ontario, before Strickland, J., of the Federal Court, who delivered the following decision on September 10, 2014.