Monday, June 4, 2018

Last Spasms of the Corpse of the Promise Doctrine

Safe Gaming System v Atlantic Lottery Corporation 2018 FC 542 McVeigh J
             2,331,238 / Safe Gaming System

The corpse of the promise doctrine has given a post-mortem gurgle in a problematic utility analysis in Safe Gaming System v Atlantic Lottery Corp. Nonetheless, I doubt this presages a zombie return.

The invention of the ‘238 patent pertains to a system for controlling online gambling. The general scheme of the invention includes an Internet Web site which serves as a portal to Internet-based gambling sites. The user sets up a profile specifying parameters, such as the amount of time spent gambling online or the amount of money lost, and the system cuts the user off from gambling sites when the parameters are triggered. The core of the decision is McVeigh J's holding that the asserted claims are invalid for lack of utility [136]. She also held them to be invalid for insufficiency [159], but not invalid for obviousness [180] or anticipation [184], but the problematic utility analysis permeated her conclusions on the other issues. She also held on the facts that the patent was not infringed by the defendant’s My-Play system [200].

To begin, McVeigh J held that utility is assessed on the basis of the patent as a whole, not on a claim-by-claim basis:

[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.

McVeigh J provides no paragraph citations to support this proposition. Statements from AstraZeneca 2017 SCC 36 itself are clearly to the contrary:

[40] For a creation to be an invention under the Act, s. 2 mandates that [the subject-matter] be useful. The subject-matter of an invention is defined by the claims, in accordance with s. 27(4).

[53] Utility will differ based on the subject-matter of the invention as identified by claims construction.

[54] To determine whether a patent discloses an invention with sufficient utility under s. 2 , courts should undertake the following analysis. First, courts must identify the subject-matter of the invention as claimed in the patent. Second, courts must ask whether that subject-matter is useful — is it capable of a practical purpose (i.e. an actual result)?

All of these statements very clearly identify the subject-matter which is the focus of the utility inquiry to be the subject matter defined by the claims. It may be that McVeigh J was relying on the statement at [49] that “ultimately, every invention pertains to a single subject-matter,” which she cites at [122]. However, that statement was made by the Court in AstraZeneca in the context of rejecting the proposition that an invention may have to satisfy multiple promised uses. As the Court makes clear at [54], also cited by McVeigh J, the "invention" in this context means the subject-matter defined by the claim at issue. Under the old promise doctrine, a single claim might have to satisfy multiple uses, and that is the proposition that was rejected in AstraZeneca. Saying that any single use is enough to make a claim useful, is not the same as saying that utility is assessed on the basis of the patent as a whole.

McVeigh J continued:

[120] Logically, the subject matter of the patent stays consistent throughout the claims.

I do not understand this. It is quite clear that the subject-matter of a claim changes from claim to claim. With respect to utility specifically, it is common for the utility to (potentially) vary from one claim to another. A pharmaceutical or chemical patent may claim both a genus of compounds and one or more specific compounds (species), where the only species have been tested. It may well be that utility is established for the species, yet the species do not allow a sound prediction of utility for the whole genus.

[120] 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. 

Sections 28.2 and 28.3 have detailed language, not to establish that claims rise and fall independently, but to address timing issues, such as the grace period, and the effect of co-pending applications. It is not true that obviousness and anticipation were assessed on the basis of the patent as a whole prior to 1993, when these provisions were introduced.

It was therefore clearly an error of law to hold that utility is assessed on the basis of the patent as a whole. That error did not directly make any difference to the result, which was driven by McVeigh J’s holding that, in effect, utility is to be measured against the promise of the patent. But McVeigh J’s conclusion foreshadows her subsequent analysis:

[120] Therefore, the utility analysis looks at the patent as a whole.

In AstraZeneca, the Court noted that “Applying the promise of the patent doctrine, as the name suggests, involves identifying ‘promises’ by considering the ‘patent as a whole’” [30]. That is exactly what McVeigh J went on to do.

McVeigh J held that “While a scintilla of utility will do, the utility must be related to the nature of the subject-matter” [124], citing AstraZeneca [55], [57]. The patentee in this case argued that the relevant is utility is “monitoring, regulating, and terminating play of any individual” [124]. McVeigh J rejected this “because it is not related to the nature of the subject matter; it is far too general” [124]. She held instead that:

[126] I find that the subject-matter of the invention was to monitor, regulate, and terminate play of problem gambling, not merely the play of all individuals as submitted by the Plaintiff. The nature of the subject-matter is an individual who is a problem gambler, or a person who needs to monitor behavior to avoid problem gambling.

Her analysis stressed throughout that the necessary utility is to monitor and mitigate “problem gambling” [137]; and see similarly [86], [91], [93], [123], [128], [129], [134.H] [138]. [140].

The problem is that there is no reference whatsoever to problem gambling in the claims at issue. Claim 1 [20] was to

A method in a computer system coupled to a global telecommunications network for monitoring, regulating, and terminating gaming activities of an individual, the method comprising the steps of:
(a) establishing a unique record for the individual. . .
(b) [means for associating an individual with their record]
(c) [interface with gaming site]
(d) [starting gaming]
(e) monitoring by the operating software [of] the [individual’s] gaming activities
(f) providing regulation of the gaming activities of the individual, the regulation including at least one action selected from the group consisting of: monitoring changes in gambling behavior, monitoring changes in speed of play, monitoring changes in quality of decisions, monitoring monetary end point, monitoring total time end point, and terminating by the operating software the gaming activities of the individual upon the individual deviating from at least one of the selected profile attributes of the individual in the data base.

Claim 6, the specific claim at issue, was a dependent claim that added specifics about the interaction between the gateway and gaming site, and nothing in the utility analysis turned on the specifics of Claim 6.

McVeigh J did not specify the basis for her holding that the necessary utility involved mitigation of problem gambling. Her specific holding was as follows (my emphasis):

[123] The subject matter of the 238 Patent involves an expert system with knowledge of individual users (obtained after an assessment) in any gambling venue (internet; video terminals; and gaming tables at a brick and mortar location) that monitors changes in gambling behaviour. The expert system regulates what the limits should be for that person (using that individual’s susceptibility) and terminates gambling when those personal limits are met. In sum, the subject matter of the 238 Patent is a gaming control system for problem gambling.

This understanding appears to have been based on the description. In her discussion of claim construction, McVeigh J began by saying “the 238 Patent’s purpose is to monitor gaming activities to mitigate problem gambling” [86]: and see [91], [93]. The description is indeed replete with references to problem gambling and gambling addiction. However, reading a promised use from the disclosure into the standard for utility is exactly the error of the promise doctrine, as the Court explained in AstraZeneca:

[44] The Promise Doctrine effectively imports s. 27(3) into s. 2 inappropriately, by requiring that to satisfy the utility requirement in s. 2 , any disclosed use (by virtue of s. 27(3) ) be demonstrated or soundly predicted at the time of filing. If that is not done successfully, the entire patent is invalid, as the pre-condition for patentability — an invention under s. 2 of the Act — has not been fulfilled.

The parallel with now-discredited promise cases is almost exact. In a paradigmatic application of the promise doctrine, the patentee would have developed a new compound with potential medical use, established by in vitro tests on a disease model, which is sufficient to satisfy the low threshold for a scintilla of utility. Yet if the description suggests that the compound may have therapeutic value, and this is interpreted as a promise of clinical efficacy, the patent would be held to be invalid for failure to establish the promise of the patent. Of course, in such cases the patentee hopes that the invention will be therapeutically effective, but the law, clarified by AstraZeneca, is that such a hope, even if stated in the description, does not become the standard for utility. In this case, the patentee clearly hoped that its invention would be helpful in addressing problem gambling, but that hope, even though expressed in the patent, does not set the standard for a scintilla of utility.

McVeigh J’s analysis turned on her understanding of the Court’s statement in AstraZeneca [53], [55], that utility must be related to the nature of the subject-matter. The Court explained that “It is not sufficient for a patentee seeking a patent for a machine to assert it is useful as a paperweight” [53]. This corresponds to the requirement in US law for a “specific” utility – since any machine could be used as a paperweight, such a use would not be considered specific to the invention (unless, of course, its main purpose was as a paperweight): see Brenner v Manson, 383 US 519 (1966). In this case, monitoring, regulating, and terminating gaming activities is undoubtedly related to the invention, and why McVeigh J held it was not, is unclear. In any event, it is perfectly clear that the Court could not possibly have intended this phrase to be a back-door to resurrect the promise doctrine, which the Court repudiated in the strongest possible terms, as being “excessively onerous” [37], “punitive” [51], “incongruent with both the words and the scheme of the Patent Act” [36], and “antagonistic to the bargain on which patent law is based,” as well as noting that it “undermines a key part of the scheme of the Act” [51].

The erroneous application of the standard for utility infected McVeigh J’s sufficiency and obviousness analysis as well. She held, in effect, that the disclosure was insufficient because it would not allow a person to build a system to mitigate problem gambling [155]. But the question of whether the disclosure would allow a skilled person to build a system to monitor, regulate and terminate gaming activities, was not addressed. Similarly, McVeigh J held that it was not obvious at the time how to build a system which would successfully mitigate problem gambling [178], but whether it would have been obvious to implement the claimed system to monitor, regulate and terminate gaming activities in the claimed manner, given the known problem of gambling addiction and the rise of internet gambling, simply was not addressed.

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