ottawa sign with aitken lee llc team

Three strikes and you’re out? – Federal Court confirms subway TV patent is obvious

The Commissioner of Patents has thrice considered Patent Application No. 2,286,794 for the invention entitled “Subway TV Media System”. The patent application is generally directed to video display systems mounted in particular locations on mass transit subway cars. A corresponding US patent issued in 2004.

The 794 Application has an extensive prosecution history. The application was initially refused by the Commissioner in 2002 for obviousness. This decision was appealed to the Federal Court and in July 2007 Justice Teitelbaum overturned the Commissioner’s refusal and remitted the application back to the Commissioner for reconsideration with directions regarding the consideration of evidence.  In October of the same year, the Commissioner again rejected the claim for obviousness. The second refusal was similarly appealed, and in 2010 in Justice MacTavish, holding that that the Commissioner’s second decision was unreasonable, again remitted the application to the Commissioner for re-determination of the issue of obviousness in light of fresh evidence on the appeal. In March 2012, a different Commissioner again refused the application for obviousness.

The Applicant then appealed for the third time to the Federal Court. On the merits, Justice Strickland applied a deferential, reasonableness standard of review to assess the application of the legal test to the facts of the case.

 Obviousness – Combinations

While individual elements were claimed, the application claimed a combination invention. In such cases, the Court must consider both the constituent elements and the combination as a whole as 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. Justice Strickland upheld the Commissioner’s finding that a combination as a whole not found in the prior art does not necessarily mean that the difference between the prior art and the invention required some degree of ingenuity.

Justice Strickland held that a trend in the prior art demonstrated a lack of ingenuity. Several variations of video display systems had been created and installed in the years preceding the application. The Court rejected the Appellants argument that this trend was a retrospective exercise used to explain away gaps in the prior art. Nonetheless, Justice Strickland held that the subsequent art was entirely consistent with the trend. While none of the previous systems entailed all the claimed elements, the Commissioner found that, taken as a whole, the prior art showed a trend of installing video systems to entertain and/or inform passengers in a variety of transportation systems. Moreover, the inventive step – essentially placing video displays on subway cars – was addressed in a prior art patent that covered such systems on “light rail horizontal people movers”.

A copy of Justice Strickland’s Judgment and Reasons, which has been appealed, may be found here.