Safe Gaming System v. Atlantic Lottery Corporation

Safe Gaming System v. Atlantic Lottery Corporation
Court (s) Database
Federal Court Decisions
Date
2018-05-25
Neutral citation
2018 FC 542
File numbers
T-1043-12
Decision Content
Date: 20180525
Docket: T-1043-12
Citation: 2018 FC 542
Ottawa, Ontario, May 25, 2018
PRESENT: The Honourable Madam Justice McVeigh
BETWEEN:
SAFE GAMING SYSTEM INC
Plaintiff
and
ATLANTIC LOTTERY CORPORATION, NOVA SCOTIA GAMING CORPORATION and TECH LINK INTERNATIONAL ENTERTAINMENT LIMITED
Defendants
JUDGMENT AND REASONS
I. The Pleadings 3
II. Summary of the Results in this Action 4
III. Background 5
A. The Parties 5
B. The 238 Patent 7
IV. Safe Gaming Expert Witnesses re infringement and validity 9
A. Plaintiff’s Expert Witnesses 9
(1) Dr. David Hodgins 9
(2) Dr. Hugh Smith 10
B. Defendants’ Expert Witnesses 10
(1) Stacy Friedman 10
(2) Dr. Mark Griffiths 11
V. Fact Witnesses 12
A. Plaintiff’s Fact Witnesses 12
(1) Richard A. Johnson 12
(2) Steve Keech 13
B. Defendants’ Fact Witnesses 13
(1) Mark Gwynn 13
(2) Byron Bridger 14
(3) Paul Vermette 14
(4) Rumin Binder 15
(5) Bob Mackinnon 15
C. Expert Witnesses - Damages 16
(1) Dr. Chris Vellturo - Plaintiff 16
(2) Russell Parr - Defendant 16
VI. The Legal Framework 17
VII. Analysis 17
A. The Law on Claims Construction 17
(1) The Relevant Date 21
(2) Person Skilled in the Art 21
(3) What the claims specifically enforce 25
(a) Construing Claims: the steps 25
(i) Construing Claims: Step 1: identify the word or phrase 25
(ii) Claims Construction: Step 2: determine the non-essential and essential elements 26
(b) Claims Construction 27
(4) Claim 1 30
(5) Claim 6 38
B. The Law on Validity – Principles of Utility, Ambiguity, Obviousness, Anticipation, non-patentable subject matter and Sufficiency 40
(1) Utility 40
(2) Sufficiency of Disclosure 47
C. Obviousness 53
(1) Identify the inventive concept of the claims at issue 60
(2) Identify what, if any, differences exist between the state of the art and the inventive concept 60
(3) Was a degree of inventiveness required? 61
D. Anticipation 61
E. Infringement 63
VIII. Remedies 67
IX. Relief 67
I.
The Pleadings
[1] This action concerns Canadian Patent 2,331,238, entitled “Safe Gaming System” [the 238 Patent]. The 238 Patent was filed in Canada on January 17, 2001, and claims priority from United States Patent Application No 60/177,182 which issued to United States Patent 6,629,890. In connection to this, the 238 Patent has a priority date of January 20, 2000. The Canadian application was published on July 20, 2001, and issued on March 28, 2006. Safe Gaming System Inc. [Safe Gaming] is the current owner of the 238 Patent.
[2] The Plaintiff Corporation, Safe Gaming System Inc., has its principal place of business in Las Vegas, Nevada, United States of America. The Defendants are the Nova Scotia Gaming Corporation (since renamed the Nova Scotia Provincial Lotteries and Casino Corporation [Gaming Corp]), the Atlantic Lottery Corporation [ALC], and Tech Link International Entertainment Limited [Techlink].
[3] The Plaintiff alleges that the Defendants infringed the 238 Patent through the design and implementation of Nova Scotia’s Responsible Gaming technology known as “My-Play.”
[4] The Defendants argue that the My-Play system does not infringe the 238 Patent and counterclaim that the 238 Patent is invalid because it lacks novelty, is obvious, insufficient, overly broad, not soundly predicted, and contains non-patentable subject matter.
[5] Counsel for both parties must be complimented on their excellent advocacy and provision of documentation, compendiums and other aids to the Court.
[6] The following issues were raised in this action:
Is Claim 6 of the 238 Patent valid?
Does the My-Play system infringe Claim 6 of the 238 Patent?
If Claim 6 of the 238 Patent is valid and infringed, what is the appropriate royalty for quantifying damages?
II. Summary of the Results in this Action
[7] The 238 Patent is invalid for lacking utility, and for providing an insufficient disclosure.
[8] Even if the 238 Patent had been valid, the My-Play system did not infringe the 238 Patent.
[9] No damages are awarded.
[10] The Defendants are entitled to have their costs in the action and counterclaim. If the parties are unable to agree on the quantum of cost, then I will receive submissions from the Defendants within (30) thirty days from the date of this Judgment. The submissions are not to exceed (10) ten pages in addition to the draft bill of costs. The Plaintiff shall file and serve its cost submissions of no more than (10) ten pages (as well as a draft bill of costs) within (15) fifteen days following receipt of the Defendants’ submissions. The Defendants may file a reply of no more than (5) five pages within (7) seven days of receiving the Plaintiff’s submissions.
III. Background
A. The Parties
[11] Safe Gaming describes itself as an implementer of technology-based solutions that provide gambling consumer protection measures, with an ultimate social mission to minimize harm from gambling.
[12] Gaming Corp is a Nova Scotia Crown corporation governed by the provincial Gaming Control Act, 1994-95, c 4, s 1 [Gaming Control Act], and carries out the management functions of regulated gaming in the province of Nova Scotia. Gaming Corp conducts and manages gaming within Nova Scotia for sustainability. It describes healthy gaming as a large number of gamblers spending a small amount of money rather than a few gamblers wagering a lot. Gaming Corp is also responsible for ticket lotteries, sports betting, casino properties, and online presence. The province of Nova Scotia has no involvement in Gaming Corp’s annual business plan or strategic direction. Before 2012, Gaming Corp board members were private citizens appointed by order of council. Now, board members are deputy Ministers who are appointed by legislation.
[13] Gaming Corp is also one of ALC’s four shareholders and a manager/operator in Nova Scotia through an agency agreement with ALC. Gaming Corp does not pay ALC for operation services, and ALC assists in drafting budgets for Gaming Corp.
[14] ALC is a company incorporated under the Canada Business Corporations Act, RSC 1985, c C-44, and runs the day-to-day operations of many of the various gaming business lines in Nova Scotia. ALC is an agent of Gaming Corp.
[15] Gaming Corp, through its agent ALC, provides socially responsible gaming products to Nova Scotians. Gaming Corp and ALC offer and provide, by themselves and through their affiliates and agents, gambling products and services including video lottery terminals [VLTs], ticket lotteries, and sports betting products to Nova Scotians.
[16] Techlink was a Canadian-owned private company that performed research and development in the gaming marketplace, and created responsible gambling systems and products for the gaming industry. At trial, Mr. Rubin stated Techlink closed in 2015, and the evidence is that it went bankrupt.
B. The 238 Patent
[17] Attached in the Appendix is Figure 1 of the 238 Patent. That same flowchart is included above the abstract.
[18] The abstract of the 238 Patent describes this technology as follows:
A gaming control system applicable to all forms of gambling, electronic or otherwise, is disclosed. The system includes an Internet Web site, with associated control software, which is a portal that serves as a “safe gaming” interface between online gambling individuals and Internet-based gambling sites. The system also allows players at physical gaming locations to register with the system for “safe gaming” at video terminals or at gaming tables. The portal software and distributed components of the system, track an individual’s gaming transactions and provide alerts to the individual of reaching or exceeding loss limits, time limits, changes in gambling behavior, and other related services.
[19] At issue are Claim 1 and Claim 6.
[20] Claim 1:
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 in a data base, and accepting at least one selected profile attribute agreed to by the individual into the unique record, the at least one profile attribute selected from the group consisting of personal factors, financial factors, social factors, psychological factors, speed of play, quality of decisions, and specific gaming control parameters;
(b) providing unique means for the individual to identify the individual’s unique record containing at least one profile attribute in the data base;
(c) providing to a selected gaming site, access to at least a portion of the data base plus operating software for monitoring and terminating the gaming activities of the individual;
(d) supplying the identifying means by the individual to the selected gaming site to commence the gaming activities;
(e) monitoring by the operating software the gaming activities between the individual with unique record and profile attributes in said data base and the selected gaming site; and
(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.
[21] Claim 6:
The method of claim 1 wherein the providing access to at least a portion of the data base plus operating software to each selected gaming site includes copying at least a portion of the data base plus operating software for monitoring and terminating the gaming activities of individuals to a server of the selected gaming site.
IV. Safe Gaming Expert Witnesses re infringement and validity
A. Plaintiff’s Expert Witnesses
(1) Dr. David Hodgins
[22] Dr. Hodgins is a Registered Clinical Psychologist and a Professor at the University of Calgary, where he was Head of the Department of Psychology from 2011 to 2016. He has a Ph.D. in Clinical Psychology from Queen’s University and has published over 150 peer-reviewed articles, a majority of which address addictions and problem gambling. He is a Registered Clinical Psychologist who has been in private practice since 1991. He specializes in the areas of addictive behaviours, including alcohol and gambling disorders and those psychiatric disorders that often occur concomitantly with those addictions.
[23] Since 2001, Dr. Hodgins has been the Research Coordinator at the Alberta Gaming Research Institute, University of Calgary Node. In 2010, he was recognized by the US National Center for Responsible Gaming with the Scientific Achievement Award for his outstanding contributions to the study of gambling disorders. He is also an editorial board member of several leading academic journals focused on gambling and addictions and has been published widely in this area.
[24] Dr. Hodgins was qualified as an expert psychologist in problem gambling.
(2) Dr. Hugh Smith
[25] Dr. Smith is a tenured Professor at the California Polytechnic State University in the College of Engineering’s Department of Computer Science. He holds a Bachelor of Arts degree in Computer Science from Xavier University, as well as a Master’s and a Ph.D. in Computer Science from Michigan State University. Dr. Smith is currently the Director of the Computer Engineering program at California Polytechnic.
[26] Prior to working in academics, Dr. Smith worked at the Merrell Dow Research Institute as a programming analyst and later worked for the Proctor & Gamble Company. Dr. Smith has received numerous awards including the Computer Science Department Professor of the Year Award from California Polytechnic State University in 2006, and the College of Engineering teaching award in 2002.
[27] Dr. Smith is qualified as an expert in computer science, software development, computer hardware, and networking including client server and distributed systems and databases.
B. Defendants’ Expert Witnesses
(1) Stacy Friedman
[28] Mr. Friedman holds a Bachelor of Arts in Computer Science magna cum laude from Harvard University. He is a professional casino game designer and mathematician with over 18 years of experience of regulated casino game development and gaming mathematics. He has been a software developer for over 15 years.
[29] Mr. Friedman began his professional experience in the casino gaming industry in 1998 with Silicon Gaming as a designer and developer of VLTs. In 2001, he started an independent casino game design and analysis consultancy, Olympian Gaming, LLC, in Lake Oswego, Oregon of which he is still President.
[30] Mr. Friedman was qualified as an expert in computer science and software engineering, specifically as it relates to gaming, electronic wagering and systems, including networked systems.
(2) Dr. Mark Griffiths
[31] Dr. Griffiths is a Professor of Behavioural Addiction at Nottingham Trent University and is currently Director of the International Gambling Research Unit. From April 2002 through October 2015, Dr. Griffiths was a professor of Gambling Studies at Nottingham Trent University.
[32] In 1987, Dr. Griffiths received a First Class Bachelor’s degree in Psychology from the University of Bradford, and a Ph.D. in Psychology from the University of Exeter in 1991. He is a Chartered Psychologist and a Fellow of the British Psychological Society, the Royal Society for the Arts, and the Academy of Social Sciences. Dr. Griffiths has researched the field of gambling studies since 1987, and is widely published in the field.
[33] Dr. Griffiths was qualified as an expert in problem gambling with an expertise in behavioural tracking.
V. Fact Witnesses
A. Plaintiff’s Fact Witnesses
(1) Richard A. Johnson
[34] Richard A. Johnson is the sole named inventor in the 238 Patent and is the Chief Executive Officer (CEO) of Safe Gaming. He is a professional engineer with experience in telecommunications spanning fifty years. He has taught and consulted on communications technology internationally.
[35] Mr. Johnson applied for the 238 Patent on January 17, 2001, and claims priority from United States Patent Application No 60/177,182 (with priority date of January 20, 2000), which issued to United States Patent No 6,629,890. The Canadian application was laid open to public inspection on July 20, 2001 and issued on March 28, 2006. Mr. Johnson assigned his interest in the 238 Patent application to Safe Gaming on September 20, 2004.
[36] The 238 Patent issued under the signature of the Commissioner of Patents and was granted for a term of 20 years from the filing date. In this action, only independent Claim 1 and its dependent Claim 6 are at issue in this trial.
[37] Mr. Johnson was a straightforward and credible witness.
(2) Steve Keech
[38] Mr. Keech has a Bachelor’s degree in Commerce from McMaster University and an MBA in Information Technology. Mr. Keech was President of Amtote International—a corporation implementing Safe Gaming System— from 2006 until July 2016.
[39] Mr. Keech’s responsibilities as President of Amtote included details such as: setting strategy, technical changes, and negotiating new business ventures. Amtote also does fixed odds, perimutuel gaming, and percentage of handle.
[40] In July 2016, Mr. Keech became the Executive Vice President for the Stronach Group, which is involved with racing and gaming. Stronach Group holds the racing assets of the Stronachs (which includes breeding and race tracks, Amtote, and beef cattle). Mr. Keech now sets strategy and oversight for Amtote rather than operational details.
[41] Mr. Keech was a straightforward and credible witness.
B. Defendants’ Fact Witnesses
(1) Mark Gwynn
[42] Mr. Gwynn holds a Master’s of Business Administration from St. Mary’s University. He has been with Gaming Corp since April 2006. He was the business analyst and later the senior manager of destination gaming and oversaw the implementation of the Informed Player Choice System which became My-Play and will be referred to as My-Play in the decision for ease of reference. In September 2015, he became the Senior Manager of Casino Gaming with Gaming Corp.
[43] Mr. Gwynn was a straightforward and credible witness.
(2) Byron Bridger
[44] Mr. Bridger has worked with ALC since May 2000. He is ALC’s Director of Marketing for destination gambling. ALC plans and operates VLTs for shareholders, and Mr. Bridger deals mostly with VLTs. ALC has about 500 employees, and operates about 1,000 retailers with about 7,000 VLTs. These assets are not just in Nova Scotia; ALC acquires VLTs and software that it then provides to overseas retailers. One of ALC’s operational roles includes issuing requests for proposal and entering into contracts with vendors.
[45] Mr. Bridger was a straightforward and credible witness.
(3) Paul Vermette
[46] Mr. Vermette holds a Bachelor’s degree with high honours in Computer Science from the University of New Brunswick. Around 2006, he started working with ALC, where he is now the Director of Workplace Technologies and is responsible for IT service desk and desk-side support, and business intelligence and analytics of the company. Previously, Mr. Vermette worked for Spielo for four years as software architect working on VLTs.
[47] Mr. Vermette was a straightforward and credible witness.
(4) Rumin Binder
[48] Mr. Binder is a design engineer, who is now the Director Engineering of VLTs at Canadian Bank Note. He joined Techlink in 2001 where he was employed for almost 15 years, and was Techlink’s Chief Technology Officer. Techlink supplied VLTs as well as responsible gaming technology such as a Hotel Room Entertainment system that allowed players to monitor their game play.
[49] Mr. Binder was a straightforward and credible witness.
(5) Bob Mackinnon
[50] Mr. Mackinnon is the President and CEO of Gaming Corp, which he joined in November 2003. By 2006, he was part of its executive team. Starting in 2004, he was responsible for responsible gaming and on the Board to oversee and approve corporate strategy, ensure controls and policies were in place and effective, and oversee performance of the CEO. He testified very precisely, measured in a professional truthful manner.
[51] Mr. Mackinnon was a straightforward and credible witness.
C. Expert Witnesses - Damages
(1) Dr. Chris Vellturo - Plaintiff
[52] Dr. Vellturo is the founder and President of Quantitative Economic Solutions, LLC, a microeconomic consulting firm. He received his Ph.D. in Economics from Massachusetts Institute of Technology in 1989. His fields of specialization include industrial organization and econometrics.
[53] Dr. Vellturo has studied the valuation of intellectual property and the assessment of economic damages due to infringement. In this context, Dr. Vellturo has studied computer hardware and software, semiconductors, consumer products, pharmaceutical products, medical devices, and over-the-counter medications amongst others.
[54] Dr. Vellturo was qualified as an expert in Economics, Patent Damages, and the reasonable royalty in Patent Infringement.
(2) Russell Parr - Defendant
[55] Mr. Parr is President of IRPA Inc., an independent consulting firm that provides consulting services, including financial analysis and valuation assessments relating to intellectual property. Mr. Parr has a Bachelor of Science in Electrical Engineering and a Master’s of Business Administration from Rutgers University. Mr. Parr is certified as a Chartered Financial Analyst, an Accredited Senior Appraiser, and a Certified Licensing Professional. Mr. Parr has published three books on royalty rates in which intellectual property is licensed.
[56] Mr. Parr was qualified as an expert in the valuation of patents and the determination of intellectual property damages including reasonable royalties in infringement cases.
[57] There was confidential information testified to regarding damages but as I am not awarding damages, there is no need for any of this decision to be confidential.
VI. The Legal Framework
[58] A patent protects an invention by granting an exclusive monopoly over it as per section 42 of the Patent Act, RSC 1985, c P-4 [Patent Act]. The Plaintiff has claimed that the 238 Patent’s monopoly is infringed by Defendants’ My-Play system, and the Defendants have counter-claimed that the 238 Patent is invalid. Before determining either of these questions, the Court must first construe the claims to understand the scope of the protection afforded by the Patent Act. Once the Court has construed the claims, the patents at issue are compared to see if there is any infringement and the 238 Patent can be reviewed for validity.
VII. Analysis
A. The Law on Claims Construction
[59] Claims construction is a question of law, and determining the scope of the claims is therefore a judicial function. Expert testimony may enlighten the Court, but it is the words of the claims that hold the meaning, not the experts (Novartis Pharmaceuticals Canada v RhoxalPharma Inc, 2005 FCA 11 at para 53). Claims construction is done before considering the issues of infringement and validity, and the same interpretation of the claims will apply to both these issues (Pfizer Canada Inc v Canada (Minister of Health), 2005 FC 1725 at para 10, aff’d 2007 FCA 1).
[60] The principles of claims construction were set out by the Supreme Court of Canada [SCC] in three cases: Whirlpool Corp v Camco Inc, 2000 SCC 67 at paragraphs 49-55 [Whirlpool], Free World Trust v Électro Santé Inc, 2000 SCC 66 at paragraphs 44-54 [Free World Trust], and Consolboard Inc v MacMillan Bloedel (Saskatchewan) Ltd, [1981] 1 SCR 504 at paragraph 27 [Consolboard].
[61] A summary of the principles derived from these decisions is that:
claims are read from the perspective of the person of ordinary skill in the art [POSITA] (who is equipped with the common general knowledge). They are construed as of the date of publication in an informed and purposive way, with a mind willing to understand;
fairness and predictability are promoted by maintaining the inventor’s intent. Evidence of this intent is derived from the language of the claims, in a way that is sympathetic to accomplishing the inventor’s purpose; and
both the disclosure and the claims reveal the nature of the invention, and while the construction of the claims must be neither benevolent nor harsh, it must be reasonable and fair to both the patentee and the public.
[62] Using these principles, the Court undergoes a purposive analysis to determine the scope of the claim through the POSITA’s perspective (Zero Spill Systems (Int’l) Inc v Heide, 2015 FCA 115 at paras 41 [Zero Spill]; ABB Technology AG v Hyundai Heavy Industries, 2013 FC 947 at para 25). While the POSITA is equipped with the common general knowledge in claims construction, the prior art is not to be referred to while claims are construed as that is done in the invalidity analysis (Zero Spill at paras 41, 51).
[63] Many courts helpfully describe the claims as fence posts, and explain that construing claims asks what lies within the fence—any part falling outside the fenced area is not protected by the patent and thus cannot be infringed (Frac Shack Inc v AFD Petroleum Ltd, 2017 FC 104 at para 231 [Frac Shack]).
[64] It is worthwhile to explain some information about how patents are structured, as it is relevant for claims construction. A definition of a patent’s “description” is provided in section 2 of the Patent Rules, SOR/96-423 [Patent Rules] which explains this as the “part of a specification other than the claims.” These two parts— the claims and the description—make up the “specification.” Looking to the prior jurisprudence, it is worth mentioning that “disclosure” was formerly used instead of “description.” For example, the patent specification in Consolboard at 520, was said to consist of the disclosure and the claims.
[65] These two components of the specification are further set out in the Patent Rules and the Patent Act. For example, Patent Rule 80(1)(e) says the description shall briefly describe the figures in the drawings, if any. In addition, the Patent Rules at section 2 say a specification must be in accordance with subsections 27(3) and (4) of the Patent Act. Subsections 27(3) and (4) of the Patent Act are included in the Appendix of this decision.
[66] The specification is relevant during claims construction, but the patent’s prosecution history is not. This is one difference between Canadian and American patent law; while American courts construe claims using the prosecution history, Canadian courts undergo claims construction as an objective test, conducted through the eyes of the POSITA reading the claims. Canadian courts may also use the description if the claims are unclear and ambiguous (Eurocopter v Bell Helicopter Textron Canada Ltee, 2012 FC 113 at para 42 [Eurocopter]). Construing the claims with regard to the prosecution history is an error in Canada (Free World Trust at para 66).
[67] Therefore, the Defendants submit that the Plaintiff’s expert Dr. Smith gave tainted evidence because he received a copy of the prosecution history before he wrote his claim construction report and used it. In contrast, Defendants’ expert Mr. Friedman was not given the prosecution history and did it double blind. This could affect an expert’s opinion or go to weight as of course a POSITA would not know the prosecution history and what changes were made. As I prefer the expert evidence of Mr. Friedman in the area the prosecution history was used by Dr. Smith, this allegation is of no consequence in this action.
[68] The experts do agree on much of the construction of the claim, but the few points, issues, and elements that they differ on are: a) whether an “expert system” or “assessment” in Claim 1 are essential elements (or whether every step is essential); b) whether the steps in Claim 1 must be in a particular order; 3) whether all members of the groups of listed factors are essential elements; and 4) whether all the steps of the method are done by a computer.
[69] With regards to validity and infringement, both Mr. Friedman and Dr. Griffiths for the Defendants, and both Dr. Hodgins and Dr. Smith for the Plaintiff, possess expertise relevant to the issues in this matter and are qualified to give expert opinions. I find all of them to possess evidence that is of assistance and these reasons will advise where I prefer the evidence of one over the other.
(1) The Relevant Date
[70] As time goes by, “the meaning of particular words or phrases may change according to the state of the art” (Stephen J Perry & T Andrew Currier, Canadian Patent Law, 2nd ed (Ontario: Lexis Nexis Canada, 2014) at s 15.23). Thus, the claims are read through the eyes of the POSITA at the relevant time. In this case, the parties and their experts have analyzed the issues using the July 20, 2001 publication date which is the relevant date for claims construction (Whirlpool at para 56).
(2) Person Skilled in the Art
[71] Because the claims are addressed to the POSITA, the Court reads the claims from the POSITA’s perspective (Whirlpool at para 53). Therefore, the first step of claims construction is for this Court to determine who the POSITA is.
[72] The SCC elaborated on the characteristics of the POSITA in Whirlpool at paragraphs 53 and 74: the POSITA is uninventive but reasonably aware of the advances in the field, appreciates “the nature and description of the invention,” and applies the patent sensibly.
[73] As Justice Manson explained in Frac Shack, the parties may bring evidence to court to help determine who the POSITA is:
[120] A qualified expert’s task is to help the Court understand who a POSITA is, what he or she would know at the relevant time (i.e., the common general knowledge), and construction issues surrounding the patents in suit…
[74] I note that the Patent Act does not say the POSITA is the inventor. In Frac Shack at paragraph 120, Justice Manson explained that: “Witnesses on the subject need not be a POSITA themselves, so long as they can provide appropriate evidence to what a POSITA would have known.” Accordingly, although Mr. Johnson, the inventor of the 238 Patent, was present at trial, the testimony from other witnesses is helpful for claims construction, which is done through the eyes of the POSITA.
[75] The parties agreed that the POSITA has knowledge of information technology, computer programming, software development, and problem gambling.
[76] The Plaintiff submits that because Mr. Johnson, the actual inventor, had no knowledge of gambling games that the POSITA is a team consisting of the “Technical Skilled Person” and the “Gambling Skilled Person.” They submit the Technical Skilled Person has knowledge of information technology, computer programming, and software development, and the Gambling Skilled Person has knowledge of problem gambling. Based on this distinction, the Plaintiff asked that I do not prefer the Defendants’ expert (Mr. Friedman) over their own expert (Dr. Smith) on the basis that Mr. Friedman has knowledge of gambling games while Dr. Smith does not.
[77] Dr. Smith explained that the member of the skilled team with expertise in information technology would have a bachelor-level degree in computer science or computer engineering or an equivalent set of skills by working in the networking field. They would typically have a few years of industry experience in developing networking systems with specific technical skills in telecommunications networks and databases. Dr. Hodgins explained that the member of the skilled team with expertise in problem gambling would have a number of years of practical clinical experience and/or research experience in this field. This person may have a post-graduate degree in psychology or an undergraduate degree in medicine, with a specialty in psychiatry.
[78] Dr. Griffiths acknowledged that the POSITA would require both software development skills as well as expertise in the psychology of problem gambling. Mr. Friedman stated that the POSITA would be a team including a software developer and someone with psychological training. Mr. Friedman stated that the software developer would have at least an undergraduate degree in computer science and 3-5 years’ work experience. Dr. Griffiths added that the POSITA would have been a psychologist with at least a few years of problem gambling research or treatment experience. However, this member would not necessarily have a Ph.D. in psychology or have to be a clinical psychologist. Dr. Griffiths concluded that through formal education or an equivalent in work-related experience, the POSITA would have had knowledge of the general psychology of problem gambling and the diagnostic screening instruments that were generally used by psychologists to diagnose mental disorders of addiction, including problem and pathological gambling.
[79] The parties agree that the POSITA on these facts—whether a team or composite person—has expertise in computer science (information/technology) as well as expertise in problem gambling. There is disagreement (though I see it as very fine points on which they disagree) on the exact, specific expertise needed in each of these areas. I agree with the parties where they agree and prefer the evidence of Dr. Griffiths and Mr. Friedman on the points of disagreement, as I find that a POSITA would have knowledge of casino games and the gambling industry. This combination of expert testimony has resulted in my determination that the POSITA would have:
An undergraduate degree in Computer Science and/or Information Technology and/or Engineering or have obtained the equivalent skills with training and education but without obtaining an actual degree.
Three to five years’ experience working as a software developer. Though Dr. Smith opined that it is helpful but unnecessary to have experience with casino systems, I disagree. A POSITA would have experience developing or designing networking systems, including distributed systems, telecommunication networks, and databases. I agree with Mr. Friedman that a POSITA would have knowledge of gambling games.
A few years of problem gambling clinical research. This includes the use of diagnostic screening or testing available at the relevant time for mental disorders, research of addiction problems and pathological gambling, as well as treatment of a problem gambler.
Psychological training. The POSITA has a combination of formal academic training as well as work experience. This would include a clinical psychologist with a Ph.D. in psychology, or a doctor specializing in Psychiatry.
(3) What the claims specifically enforce
(a) Construing Claims: the steps
(i) Construing Claims: Step 1: identify the word or phrase
[80] The first step is to identify the words or phrases in the Plaintiff’s claim that are descriptive and identify the elements of the invention (Free World Trust at para 68). This analysis must be in accordance with section 12 of the Interpretation Act, RSC, 1985, c I-21, which states that words are interpreted in a way that “best ensures the attainment of its objects.” Further, when doing a purposive claims construction, if the claims are unclear and ambiguous then the Court may turn to the disclosure for context to construe the claims (Bombardier Recreational Products Inc v Arctic Cat Inc, 2017 FC 207 at para 296 [Bombardier Recreational Products]).
[81] When analyzing these words, the Court must also use “a mind willing to understand.” This means the author’s purpose and intent must be kept in mind (Whirlpool at para 49). Knowing the purpose gives the words context. This helps the Court’s interpretation to be “reasonable and fair to both patentee and public” (Whirlpool at para 49, citing Justice Dickson in Consolboard at 520-521).
(ii) Claims Construction: Step 2: determine the non-essential and essential elements
[82] The process to determine what identified words and phrases are essential and non-essential was summarized succinctly by the Federal Court of Appeal [FCA] in Halford v Seed Hawk Inc, 2006 FCA 275 [Halford]:
[13] In the process of construing the claims of a patent, a court will identify some elements of the invention as essential. The determination of which elements are essential depends upon the language of the claims, read purposively, and informed by evidence as to how persons skilled in the art would understand the claims (Whirlpool at paragraph 45). An element may be found to be essential on the basis of the intent of the inventor as expressed or inferred from the claims, or on the basis of evidence as to whether it would have been obvious to a skilled worker at the time the patent was published that a variant of a particular element would make a difference to the way in which the invention works (Free World at paragraphs 31 and 55).
[83] And as described by Justice Binnie in Free World Trust at paragraph 20:
Based on the expert evidence given at trial as to the meaning of the terms used, and the understanding that these terms would convey at the date of the patent to an ordinary worker skilled in the art of electro-magnetotherapy devices and possessing the common knowledge of people engaged in that field, it appears that while some of the elements of the ‘156 and ‘361 patents are essential if the devices are to work as contemplated and claimed by the inventor, others are non-essential. The non-essential elements may be substituted or omitted without having a material effect on either the structure or the operation of the invention described in the claims.
[Emphasis added]
[84] In summary, an element is non-essential if, based on a contextual reading of the claims, the inventor intended for it to be non-essential (Whirlpool at para 68; Halford at para 13); or if the POSITA would understand that changing this element would not change how the invention works (Free World Trust at para 20).
[85] In this case, the Defendants submit that all the elements were essential, and the Plaintiff argued some were non-essential. Having heard the evidence from the experts, I conclude that all of the elements of the claim as construed (below) are essential elements. Every step of the claim is an essential element as a POSITA would not have understood that any of the steps were non-essential and as each element is essential for the Safe Gaming System to function.
(b) Claims Construction
[86] A mind willing to understand “necessarily pays close attention to the purpose and intent of the author” (Whirlpool at para 49(c)). In this case, the 238 Patent’s purpose is to monitor gaming activities to mitigate problem gambling. (I use the term mitigate in this decision but that is not defined and easily mitigate could be substituted with help, lessen, decrease, reduce or any other number of these synonyms.)
[87] The 238 Patent explains this is to be done by a “method in a computer system coupled to a global telecommunications network for monitoring, regulating and terminating gaming activities of an individual” and then goes on to set out the steps of the method. From an overview perspective, the description explains this is all achieved by an expert system suggesting limiting parameters based upon the player’s responses in an assessment, including “any legislated or jurisdictional parameters, and the guidelines and norms maintained within the system.” Once the parameters are established, the software can then reveal variances from the norm or established parameters, and recognize problems based upon comparison of monitored behaviour with the knowledge base. This system communicates between land based gaming, internet gaming, and online gaming so that the system can track “a player’s gaming time, expenditures, and other behaviour such as speed of play and quality of gaming decisions.”
[88] As would be clear to a POSITA from the foregoing, to carry out its purpose the 238 Patent needs players to register. The description states that the preferred method is for users to register personally on the Safe Gaming website. But alternative ways of registering include by telephone or through third party entities such as a “governmental agency, a gaming company, an online gaming site, or a credit card company may be permitted to perform the service of assisting in registering the user.”
[89] The 238 Patent description also states registration involves presenting the user with “a series of questions and information to fill out online.” In addition, the description explains “these gaming control parameters are used in the monitoring software that tracks gambling activity and intervenes when appropriate.” In other words, only by obtaining this information can the “assessment” of the user’s personal financial, social, and psychological factors occur; the assessment determines the “gaming control parameters” that should be implemented.
[90] As explained above, parameters are suggested based on factors including the user’s responses and legislation. Some suggested parameters will be monetary amounts, and time budgets. In addition, problem gambling susceptibility can be assessed in real time and presented with suggested actions. In the end, the user is to accept these limits, and (after verifications and credit check) unique permanent account numbers and passwords are assigned. Possibly, the user will be issued an encoded smart card. The system is then to monitor and regulate (with warnings when limits are being reached) the gambling of that individual and terminate the gambling when the parameters are met.
[91] To monitor and control gaming activities at any time, this system functions co