Federal Court Rejects Subway Video Advertising Patent for Obviousness

Federal Court Rejects Subway Video Advertising Patent for Obviousness

Blair v Canada (Attorney General), 2014 FC 861

The Federal Court dismissed an appeal from a decision of the Commissioner of Patents denying the Canadian Patent Application No. 2,286,794 (the Application) for obviousness. The Application relates to a system of television displays in a subway car located at the junction between the wall and ceiling of the subway car.

This decision follows a lengthy judicial history during which the appellant inventor, Scott Blair, sought to have the Application approved. Two decisions of the Commissioner have previously rejected the Application for obviousness. [11, 14] Two Federal Court decisions have remitted the issue back to the Commissioner. When the second Federal Court decision remitted the issue to the Commissioner for the third time, the Court ordered that the Commissioner consider fresh evidence known as the Morris affidavit. [19] This third Commissioner decision rejected the Application for obviousness, and is the decision on appeal. [20]

The Commissioner Rejected the Application for Obviousness

Claim 1 is the primary claim at issue:

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. [6]

In coming to its finding of obviousness, the Commissioner determined that while the combination of the elements in the invention as a whole was novel, it did not involve ingenuity as there was a “trend in the art” of installing video systems in a wide variety of transportation systems. [22] Further, the Commissioner found no inventive step in the particular implementation the Application describes, namely that the monitors be placed in the junction between the subway car wall and the ceiling. [22] The Commissioner found that the Morris evidence to be unpersuasive on the obviousness issue. [25] On an alternative line of reasoning, the Commissioner would find the invention obvious because the proposed video system would merely substitute the existing advertisements that are located at the wall-ceiling junction on subway cars. [26]

The Issues on Appeal

Blair raised a number of issues on appeal, which the Court summarizes as follows:

1. Should the Commissioner be removed as a respondent to the appeal?

2. What weight, if any, should this Court afford to Blair’s new evidence concerning the marking of his application as being “dead” by CIPO?

3. What is the standard of review?

4. Did the Commissioner err in finding Blair’s proposed invention obvious?

The Commissioner of Patents is Removed as a Respondent

The Respondent Attorney General brought a motion seeking an order to remove the Commissioner as a respondent to the appeal. [40] This motion was granted, with the Court rejecting Blair’s arguments that it would be proper to name the Commissioner as a party, [45] that the Commissioner had been named a party in other proceedings, [49] and that the Commissioner would not otherwise be bound by this decision. [50] The Court rejected these arguments with regard to the Federal Court Rules [45] and the fact that the Commissioner is not a party of first instance with an adverse interest. [48]

Evidence that CIPO Indicates the Application as “Dead” is Not Relevant

Blair brought new evidence that the CIPO database currently indicates the Application at issue as “dead”. [55] He argued that the Commissioner had no statutory basis for doing so, and that this shows the Commissioner has failed to treat him fairly. [60] The Court determined that this evidence is only relevant for grounding Blair’s request for relief if the appeal succeeds, which it does not. [63]

Standard of Review is Reasonableness

The Attorney General argued that Blair confused the identification of the correct legal test for obviousness with its application to the evidence. [68] The Court decided that at issue was the Commissioner’s treatment and assessment of the evidence, for which the standard of review is reasonableness. [72]

The Commissioner’s Decision was Reasonable

Blair argued that the Commissioner erred by (i) not adequately considering the Morris affidavit, (ii) analyzing the elements of the claim separately instead of as a whole, (iii) not fairly considering his evidence, and (iv) using the “trend in the art” as a retrospective exercise to explain away gaps in the prior art. [73]

The Court found that the Commissioner considered the Morris evidence with respect to the location at which the video monitors would be installed. However, the Commissioner reasonably placed greater weight on contrary affidavit evidence which was to the effect that selecting the monitor location and mounting means is left to judgment based on ordinary skill. [81] This contrary affidavit evidence, which had been submitted by Blair in addition to the Morris evidence, [21] reasonably led the Commissioner to conclude that the placement did not involve an inventive step. [97]

The Court found that the Commissioner considered the individual element of the placement of the monitors for the proper purpose of assessing differences between the invention and the prior art. [107] The Commissioner considered the combination of the elements as a whole to come to its finding of obviousness. [109]

Blair argued that the Commissioner came to its conclusion before examining the evidence. [110] The Commissioner had stated that its finding of obviousness “remains unchanged” after considering the totality of the evidence. [114] Though it made a “poor choice of words”, the Court examined the reasoning of the Commissioner and found that it weighed the evidence in coming to its conclusion. [114]

Blair argued that the Morris evidence contradicts the Commissioner’s view of the “trend in the art” since it contains “subsequent art” that shows four subway systems with installed video systems after the priority date of the Application, none of which showed all the elements of Blair’s claimed invention. [115] However, the Commissioner considered other evidence that showed a trend of installing video systems in a variety of transportation systems prior to the Application filing date, [116] and found the “subsequent art” to be consistent with that trend. [122] The Commissioner considered the elements that went beyond that trend and found that the combination of these elements did not involve an inventive step. [118] The Court found the Commissioner’s decision to be reasonable. [123]

Commentary

In this decision the Federal Court makes note of two trends in video systems on transit: firstly, the prior art trend that video systems are being installed on a variety of transit systems, and secondly, the “subsequent art” trend that occurs after the filing of the patent where video systems on subway systems are installed, but not in the manner described in the claimed invention.

The Court accepted the prior art trend and incorporated it into its reasoning that the implementation in the claimed invention did not require an inventive step. However, the Court seemed to disregard the fact that none of the embodiments in the continuing subsequent trend included an embodiment like the one claimed. The appellant seems to have pointed to the absence of his embodiment in the trend as evidence that his embodiment involves an inventive step. However, the Court seems to have responded by saying that even if the trend does not include your claimed invention, your invention may still be obvious.