Pollard Banknote Limited v. BABN Technologies Corp., 2016 FC 883

Pollard challenged the validity of Scientific Games' (the successor to BABN) patent. Scientific Games counterclaimed with allegations of infringement. The Court held that the patent was invalid, and in any event, not infringed.

The Court considered construction and held that there is arguably an inconsistency between the principle that claim construction should be done before consideration of validity, and the principle that if more than one construction can reasonably be reached, the Court must favour the one that upholds validity. However, the Court held that this can be reconciled by the guidance that the Court is not to construe a claim without knowing where "the shoe pinches". Thus, the principles must work hand in hand. In obiter, the Court commented on the file history and the problems associated with not permitting the use of extrinsic evidence in claims construction.

Scientific Games argued that due to Pollard's involvement in filing numerous protests, the patent was delayed in issuance, and deference should be given to the Patent Examiner. The Court disagreed, holding that a more direct reason for the delay was that the arguments from the protests were accepted by the examiner, and communicated to Scientific Games in Office Actions. Furthermore, Scientific Games waited until the end of the 6-month period to respond to each of those office actions, so it was not concerned with delay. In addition, this is not a judicial review proceeding, so there is no standard of review to be applied to the Examiner's decision. Validity is to be assessed on a balance of probabilities.

The Court found one of the dependant claims invalid for ambiguity, holding that the bar code cannot be located in two mutually exclusive areas on the same ticket, thus, no reasonable interpretation can be given to the language of the claims. The Court held that the patent was not invalid for overbreadth, inutilty or anticipation. However, the patent was held invalid for obviousness. The patent was also held to not be infringed.