The United States Supreme Court's Recent Decision on the Standard for Obviousness in Patent Law
The decision of the United States Supreme Court in KSR International Co. v. Teleflex Inc. 82 USPQ 2d 1385 (U.S.S.C.), decided April 30, 2007, with its authoritative review of the U.S. law as to obviousness in patent law, provides a convenient opportunity to compare the U.S. and Canadian tests for obviousness as well as to see whether from a Canadian perspective there are lessons to be learned from this decision.
In the United States, as in Canada, the patent legislation originally did not include a specific requirement of non-obviousness. However, in both countries it was established by the jurisprudence that to be patentable a development had to be not only new and useful, but also not an obvious development over what was known.
In the United States, the 1952 Patent Act added a statutory requirement of non-obviousness in section 103 which provided:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
In Canada, our statutory test came much later. Section 28.3 added in 1996 provides:
The subject-matter defined by a claim in an application for a patent in Canada must be subject-matter that would not have been obvious on the claim date to a person skilled in the art or science to which it pertains, having regard to
(a) -information disclosed more than one year before the filing date by the applicant, or by a person who obtained knowledge, directly or indirectly, from the applicant in such a manner that the information became available to the public in Canada or elsewhere; and
(b) -information disclosed before the claim date by a person not mentioned in paragraph (a) in such a manner that the information became available to the public in Canada or elsewhere.
In both jurisdictions the issue is whether the subject matter would have been obvious to the person of ordinary skill in the art in light of the prior art at the relevant date.
KSR v. Teleflex
KSR was an action brought by Teleflex against KSR (a Canadian company) for infringement of a patent relating to a gas pedal for automobiles which was adjustable for use by drivers of different stature. Adjustable pedals were known. The subject matter of the claim in issue combined an electronic sensor with an adjustable pedal so that the pedal's position could be transmitted to a computer controlling the throttle in the vehicle's engine. The legal issue in KSR was the appropriateness and applicability of an approach to the determination of obviousness established by the United States Court of Appeals for the Federal Circuit, which test was described by Kennedy J. in KSR as follows:
Seeking to resolve the question of obviousness with more uniformity and consistency, the Court of Appeals for the Federal Circuit has employed an approach referred to by the parties as the "teaching, suggestion, or motivation" test (TSM test), under which a patent claim is only proved obvious if "some motivation or suggestion to combine the prior art teachings" can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art.
Justice Kennedy referred to section 103 and said that in Graham v. John Deere Co. of Kansas City, 383 U. S. 1 (1966), the Supreme Court set out a framework for applying the statutory language of that section. He said: "The analysis is objective" and quoted the following passage from Graham:
Under §103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.
After reviewing the facts and the decisions of the courts below, Kennedy J. said:
We begin by rejecting the rigid approach of the Court of Appeals. Throughout this Court's engagement with the question of obviousness, our cases have set forth an expansive and flexible approach inconsistent with the way the Court of Appeals applied its TSM test here.
He noted that Graham recognized the need for "uniformity and definiteness," but also reaffirmed the "functional approach" and to that end set forth a broad inquiry and invited courts, where appropriate, to look at any secondary considerations that would prove instructive. He said:
Neither the enactment of §103 nor the analysis in Graham disturbed this Court's earlier instructions concerning the need for caution in granting a patent based on the combination of elements found in the prior art. For over a half century, the Court has held that a "patent for a combination which only unites old elements with no change in their respective functions … obviously withdraws what is already known into the field of its monopoly and diminishes the resources available to skillful men." This is a principal reason for declining to allow patents for what is obvious. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. … [citations omitted]
He referred to three cases decided after Graham as illustrations of this doctrine and continued:
The principles underlying these cases are instructive when the question is whether a patent claiming the combination of elements of prior art is obvious. When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. … a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.
Following these principles may be more difficult in other cases than it is here because the claimed subject matter may involve more than the simple substitution of one known element for another or the mere application of a known technique to a piece of prior art ready for the improvement. Often, it will be necessary for a court to look to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. … As our precedents make clear, however, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.
In rejecting the the requirement of demonstrating a teaching, suggestion, or motivation to combine known elements in order to show that the combination is obvious as a rigid rule, Justice Kennedy for the Supreme Court noted inter alia the following points:
1. A patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.
2. Although common sense directs one to look with care at a patent application that claims as innovation the combination of two known devices according to their established functions, it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. This is so because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.
3. Helpful insights need not become rigid and mandatory formulas and when so applied are incompatible with its precedents.
4. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents. The diversity of inventive pursuits and of modern technology counsels against limiting the analysis in this way.
5. In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends.
6. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.
7. In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.
8. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under §103.
9. One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims.
10. The Court of Appeals erred by looking only to the problem the patentee was trying to solve. The question is not whether the combination was obvious to the patentee but whether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.
11. The Court of Appeals erred in its assumption that a person of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem. Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.
12. A person of ordinary skill is also a person of ordinary creativity, not an automaton.
13. The Court of Appeals also erred in concluding that a patent claim cannot be proved obvious merely by showing that the combination of elements was "obvious to try." When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under §103.
14. The Court of Appeals, drew the wrong conclusion from the risk of courts and patent examiners falling prey to hindsight bias. A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning, but rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.
In concluding his discussion of the principles, Justice Kennedy said:
We build and create by bringing to the tangible and palpable reality around us new works based on instinct, simple logic, ordinary inferences, extraordinary ideas, and sometimes even genius. These advances, once part of our shared knowledge, define a new threshold from which innovation starts once more. And as progress beginning from higher levels of achievement is expected in the normal course, the results of ordinary innovation are not the subject of exclusive rights under the patent laws. Were it otherwise patents might stifle, rather than promote, the progress of useful arts. See U. S. Const., Art. I, §8, cl. 8. These premises led to the bar on patents claiming obvious subject matter established in Hotchkiss and codified in §103. Application of the bar must not be confined within a test or formulation too constrained to serve its purpose.
In addressing the facts of the case, Justice Kennedy said the trial court had correctly concluded that at the relevant date it was obvious to a person of ordinary skill to combine an adjustable pedal as shown in a prior patent (Asano) with a pivot-mounted pedal position sensor. He said:
… There then existed a marketplace that created a strong incentive to convert mechanical pedals to electronic pedals, and the prior art taught a number of methods for achieving this advance. The Court of Appeals considered the issue too narrowly by, in effect, asking whether a pedal designer writing on a blank slate would have chosen both Asano and a modular sensor similar to the ones used in the Chevrolet truckline and disclosed in the '068 patent. … The proper question to have asked was whether a pedal designer of ordinary skill, facing the wide range of needs created by developments in the field of endeavor, would have seen a benefit to upgrading Asano with a sensor.
KSR and Canadian Law
There are many points of similarity between the Canadian law of obviousness and the principles set out in KSR.
1. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress.
2. Obviousness is an objective test.
3. It is based on the scope of the claim.
4. The issue is not whether the subject matter was obvious to the patentee, but whether the subject matter was obvious to a person with ordinary skill in the art.
5. A combination is not obvious merely because the elements are old.
6. The court should be cautious of arguments reliant on ex post facto reasoning.
However, there are some points on which Canadian law has taken a different tack.
"Obvious to try"
Justice Kennedy said that the Court of Appeals erred in concluding that a patent claim cannot be proved obvious merely by showing that the combination of elements was "obvious to try."
In Canada under the current jurisprudence, "obvious to try" or "worth a try" is not the test. Although the worth a try approach has been endorsed in the United Kingdom, that approach was rejected in Canada.
In Farbwerke Hoechst Aktiengesellschaft v. Halocarbon (Ontario) Ltd. et al., (1974), 15 C.P.R. (2d) 105 (F.C.T.D.), reversed  2 F.C. 468 (F.C.A.), restored  2 S.C.R. 929 (S.C.C.), the patent concerned a process for making isohalothane by carrying out a particular reaction in the liquid phase. A prior article described the process, but did not identify whether it was carried out in the liquid or gaseous phase. The Federal Court of Appeal held that the process was obvious since the article pointed to the process and all that had to be done was determine whether it would work successfully. However, the Supreme Court reversed, holding that the trial judge correctly concluded that it had to be obvious that it would work successfully.
In Aventis Pharma Inc. v. Apotex Inc. et al. (2005), 44 C.P.R. (4th) 108 (F.C.) at paras. 126–129, Tremblay-Lamer J. found that the literature taught that it would have been expected that ramipril, an ACE inhibitor, would be effective to treat heart failure in common with other ACE inhibitors. The person skilled in the art would want to test this to be sure, but its utility for this purpose was obvious. She said:
 This case illustrates, in my view, the distinction between whether the invention taught in the patent was obvious or merely "worth a try." The prior art… clearly indicates that it was known that ACE inhibitors would be useful for the treatment of heart failure. There was no necessary additional step required. It is evident that, to the person skilled in the art, the use of ACE inhibitors for the treatment of heart failure was more than merely "worth a try;" it was obvious.
"A person of ordinary creativity"
Justice Kennedy said that a person of ordinary skill is "a person of ordinary creativity," not an automation. He also said that "a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."
In Canada, it is settled that the person skilled in the art is "unimaginative." It is doubtful whether such a person is to be considered creative. In Beloit Canada Ltd. v. Valmet Oy (1986), 8 C.P.R. (3d) 289 (F.C.A.) at p. 294, Hugessen J.A. said:
The test for obviousness is not to ask what competent inventors did or would have done to solve the problem. Inventors are by definition inventive. The classical touchstone for obviousness is the technician skilled in the art but having no scintilla of inventiveness or imagination; a paragon of deduction and dexterity, wholly devoid of intuition; a triumph of the left hemisphere over the right. The question to be asked is whether this mythical creature (the man in the Clapham omnibus of patent law) would, in the light of the state of the art and of common general knowledge as at the claimed date of invention, have come directly and without difficulty to the solution taught by the patent. It is a very difficult test to satisfy.
Nevertheless, the person skilled in the art is not an automaton, but a person with a mind willing to understand and a person who is trying to achieve success: Free World Trust v. Électro Santé Inc.,  2 S.C.R. 1024 (S.C.C.) at paras 44.
Justice Kennedy said: "…the results of ordinary innovation are not the subject of exclusive rights under the patent laws." One must be careful of this as a principle as applied to Canadian law. "Innovate" means literally to make new. If by this statement he means ordinary developments within the normal stock and trade of a person skilled in the art are not patentable, Canadian courts would agree that this is not the proper subject matter of a patent. However, in some contexts "innovate" may connote invention. Indeed, Justice Kennedy used it in this sense in saying that granting patent protection to advances that would occur in the ordinary course without "real innovation" retards progress. In this sense, innovation is incompatible with obviousness.
Some Helpful Observations
The decision in KSR is a good reminder that the test for obviousness, a statutory test in both Canada and the U.S., is to be determined in accordance with practical common sense and is not to be hamstrung by rigid rules. Helpful insights should not become rigid and mandatory formulas. It is a practical issue to be determined in light of the particular field to which the patent relates.
It also is a reminder that in assessing obviousness, one does not look blindly at the field of the invention as an isolated field of endeavour. As long ago as Gadd et al. v. The Mayor, etc. of Manchester (1892), 9 R.P.C. 516 (C.A.), the courts have considered the extent to which knowledge from other fields would have provided an obvious solution to a problem.
Finally, it is a reminder that one development builds on another – each advance, once it becomes known, defines a new threshold from which innovation starts once more. What is to be decided is what was the state of the art at the relevant date and, looking at this issue objectively and assuming that the skilled worker was aware of the state of the art at that date, was the development obvious to such person in light of such art.