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Problem Gaming Patent Lacks Scintilla Of Utility

On May 25th, 2018 the Federal Court of Canada released its decision in Safe Gaming System Inc v. Atlantic Lottery Corporation involving claims 1 and 6 Canadian Patent No. 2,331,238 generally directed to a gaming control system for problem gamblers. This case is noteworthy because the Court held that the patent lacked utility even after the Supreme Court of Canada’s recent decision in AstraZeneca (see our discussion here) holding that a scintilla of a real-world utility is enough to satisfy the utility requirement of the Patent Act


Following AstraZeneca, Justice McVeigh held that the since the subject matter of the patent logically stays consistent throughout the claims, utility is to be determined on the basis of the patent as a whole:

[120] Whether utility is assessed claim-by-claim or based on the whole patent requires some discussion. First, AstraZeneca says that the subject matter of the proposed invention is to be determined, not the subject matter of each claim. Logically, the subject matter of the patent stays consistent throughout the claims. In addition, the statutory wording of section 2 of the Patent Act is unlike that of 28.2 and 28.3—wording which previously led the courts to determine that obviousness and novelty are assessed on a claim-by-claim basis. Therefore, the utility analysis looks at the patent as a whole.

Following the test for sound prediction set out by the Supreme Court of Canada in AZT, Justice McVeigh held that as of the priority date, the inventors could not demonstrate sound prediction in part because:

  • The inventor had made the invention on his home computer without the necessary networking architecture for a distributed system.
  • The schematic flowchart in the patent was not fully developed.
  • The inventor did not have a database to monitor speed, quality of decisions, gambling behavior gaming probabilities or quality of play.
  • The prototype was not connected to a gaming environment.
  • No testing was done on the system to see if it would reduce problem gambling.

Justice McVeigh ultimately concluded that the 238 Patent lacked utility, holding:

[139] Thus, the utility of the 238 Patent does not satisfy section 2 of the Patent Act, and the patent is invalid. If Claim 1 is invalid in this way so is Claim 6, because Claim 6 does not narrow Claim 1 in this aspect. I do not find there is a scintilla of utility in the 238 Patent and I am supported by Mr. Friedman and Dr. Griffiths and adopt their reasoning.

[140] A patent that could do what this patent says it can would be a very useful tool with regards to “problem gambling.” But this patent could not do what it says it could, nor was it soundly predicted, no matter how purposeful I attempt to construct the terms. At the relevant time little was even known about “problem gambling” and the screening tests were in infancy. Then the mere impossibility of what the patent says the invention will do and what it could do makes this patent difficult due to the insufficient disclosure (discussed more below). The testimony of Mr. Johnson confirms that in fact the patent could not do what it says as it was not fully developed.

Insufficient Disclosure

Justice McVeigh held that because the claims do not define essential terms like “selected profile attributes” or contain information on how to select profile attributes, the skilled person would need to undertake a major research project to figure out how to work the claimed method.  Justice McVeigh rejected the plaintiff’s arguments than any gaps in the disclosure could be filled by the skilled person’s general knowledge, holding:

[155] Having construed the 238 Patent, I do not find the patent descriptive enough for a POSITA to be able to understand how the invention is defined. It is not sufficiently explained as the terms are ambiguous and they are so wide as to be infinitive, and not instructive of how the actual limits could be set to monitor, regulate, and terminate to the mitigate problem gambling.

Other Issues

Justice McVeigh also considered but dismissed the Defendants argument that the claims lacked novelty or inventiveness. Although not necessary for the disposition of the action, Justice McVeigh also held that the Defendants did not infringe either of the asserted claims.

A copy of Justice McVeigh’s Judgment and Reasons may be found here.