On April 30, 2007, the Supreme Court of the United States released its unanimous decision in KSR International Co. v. Teleflex Inc. The Supreme Court reversed a decision of the Court of Appeals for the Federal Circuit (“CAFC”) and restored a District Court decision that dismissed a patent infringement action on the basis that the patent in suit was obvious. In its reasons, the Supreme Court criticized the rigid application of the “teaching, suggestion, motivation” (“TSM”) test which has been used for some time by the CAFC.
The patent in suit in the KSR case concerned a throttle pedal assembly for an automobile in which the throttle is electronically controlled (i.e., not mechanically linked to the engine) and in which the pedals are adjustable for drivers of different heights. It was well known prior to the patent in suit that sensors for the position of the throttle pedal could be incorporated in the pedal assembly. It was also known that chafing of wires and other problems could be prevented by putting the sensor on a fixed part of the pedal assembly rather than a movable part. Self-contained modular sensors had been developed for use with various pedals and were applied to the fixed part of the pedal assembly. There was also prior art concerning the placement of sensors on the movable pedal footpad of an adjustable pedal assembly and wire chafing was a known problem.
The claim in dispute concerned an adjustable pedal assembly for a vehicle in which the pedal was electronically controlled and the sensor was located on the fixed support portion of the assembly. The issue in dispute was whether it was obvious, in such an adjustable and electronically controlled pedal assembly, to place the sensor on the fixed portion of the assembly.
Section 103 of the U.S. Patent Act provides that a patent is not available “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.”
In 1966, in Graham v. John Deere Co. of Kansas City, the Supreme Court provided a framework for applying section 103:
Under s. 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.1
The TSM test was subsequently developed by the CAFC to deal with issues of obviousness in combination patents. The TSM test provided that a patent claim could be obvious only if there was “some motivation or suggestion to combine the prior art teachings.”2
In KSR, the Supreme Court began its analysis of the law by explicitly rejecting the rigid application of the TSM test.3 The Court noted that it has long held that a principal reason for declining to allow patents for what is obvious is 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.”4 The Court went on to note that, “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 application is beyond his or her skill.”5
The Supreme Court acknowledged that, in creating the TSM test, the CAFC “captured a helpful insight. … [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.”6 The Court went on to state that “[t]here is no necessary inconsistency between the idea underlying the TSM test and the Graham analysis. But when a court transforms the general principle into a rigid rule that limits the obviousness inquiry, as the Court of Appeals did here, it errs.”7
The Supreme Court’s discussion of the correct obviousness analysis included the following:
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 the invention a known problem for which there was an obvious solution encompassed by the patent’s claims.
The first error of the Court of Appeals in this case was to foreclose this reasoning by holding that courts and patent examiners should look 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.8
The Court then turned to a discussion of the person of ordinary skill in the art:
The second error of the Court of Appeals lay 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.9
The Court added “A person of ordinary skill is also a person of ordinary creativity, not an automaton.”10
This ordinarily creative person who is able to fit together pieces of a puzzle contrasts starkly with the technician skilled in the art who is the “classical touchstone for obviousness”11 in Canada. In Canada, this technician has “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.”12 With the shift in the U.S. standard of obviousness as a result of the KSR decision, it is reasonable to expect that a similar debate may take place in Canada.
Another criticism by the Supreme Court of the CAFC decision in KSR concerned whether a patent claim can be proved obvious merely by showing that the combination of elements was “obvious to try”. The Supreme Court said:
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 s. 103.13
In the end, the Supreme Court concluded that the patent claim in issue was obvious. This decision raises the bar of inventiveness for patent owners and applicants in the United States, at least where the claimed invention is a combination of known elements. This will likely make it harder to obtain patents and harder for issued patents to survive scrutiny in the courts. On the other hand, parties who are accused of infringement or who, for any reason, are assessing the validity of patent claims concerning combinations will have a strong new argument in their favour.