KSR v. Teleflex: the view from here

by Jenna Wilson

Originally published July 2007 by Thomson Carswell on IPSource. Used with permission.

At the end of April 2007, the Supreme Court of the United States released its long-awaited opinion in KSR International Co. v. Teleflex Inc. ("KSR").¹ This opinion has been hailed as the most important decision on obviousness in U.S. patent law since Graham v. John Deere Co. in 1966 ("Graham"),² and patentees and patent applicants in the U.S. have begun to feel the effects.

The KSR opinion, while it restated the framework of a proper obviousness analysis, focused on the role of the "teaching-suggestion-motivation" test (often referred to as the "TSM test") in assessing obviousness. The TSM test requires a showing that a teaching, suggestion, or motivation to combine previously known elements in order to demonstrate that the combination of those known elements is obvious;³ and it was applied in many subsequent cases, and in patent prosecution before the USPTO, no doubt because its formula was so simple and straightforward. However, as the Supreme Court explained in KSR, it is not meant to supplant a fulsome obviousness analysis.

The motivation behind this new obviousness decision was a Canadian manufacturer and supplier of auto parts, KSR International. KSR had been sued for infringement by Teleflex Inc., the licensee of a patent (the "Engelgau patent") for an adjustable pedal with electronic throttle control. KSR successfully moved for summary judgment before the District Court on the sole claim in issue, obtaining a finding that the claim was invalid for obviousness.

In reaching its conclusion, the District Court had both followed the Supreme Court's previous directions for assessing obviousness in Graham and applied the TSM test. However, the Court of Appeal overturned the District Court judgment and noted that the lower court had not been strict enough in applying the TSM test. Because the prior art references were not directed towards solving the very problem that Englegau had sought to solve, the Court of Appeals concluded that under the TSM test a person of ordinary skill in the art would not have been lead to combine the art as the District Court had done.⁴ KSR International then appealed to the Supreme Court, which in turn reversed the Court of Appeals.

The Supreme Court determined that in applying the TSM test in this very particular manner, the Court of Appeals had erred. While still allowing that a judiciously-applied TSM test provides a "helpful insight" and is not incompatible with Graham,⁵ the Supreme Court sternly warned that the TSM test could not be rigidly and formulaically applied as the Court of Appeals had done. When looking for a motivation to lead a skilled worker from the prior art to the claimed invention, the Supreme Court confirmed that it was not necessary to seek out precise teachings directed to the specifically claimed subject matter; it was permissible to take into account the "inferences and creative steps that a person of ordinary skill in the art would employ."⁶

While KSR expressly imbues the person of ordinary skill with some amount of creativity in combining prior art elements, thus allowing him or her to find motivation to combine those elements outside the prior art documentation itself, the Supreme Court emphasized that the reasoning underpinning that motivation must be made explicit; mere conclusory statements will not suffice.⁷

In short, KSR teaches that there is no quick test for obviousness or non-obviousness in U.S. patent law. Although the TSM test provides a helpful guide, it cannot be applied rigidly. KSR thus effectively raises the standard for inventiveness previously applied by the Federal Circuit: it is no longer enough for a claimed invention to simply the strict TSM test to be declared non-obvious; the invention must also satisfy a proper obviousness analysis.

KSR's effect on existing U.S. patents...

Technically speaking, however, the issuance of the KSR opinion did not result in a sudden change in Court of Appeal practice. Commentators have observed that the Federal Circuit altered its handling of obviousness analyses after certiorari had been granted to KSR but before the issuance of the Supreme Court opinion.⁸

For patentees, a disturbing consequence of KSR is the weakening of the presumption of validity for patents examined by the USPTO under a rigid application of the TSR test. The diminution of this presumption was even expressly noted by the Supreme Court.⁹

... and U.S. patent applications

While U.S. patent examiners have been instructed post-KSR to undertake obviousness analyses consistent with Graham and to continue identifying the motivation for a person skilled in the art to arrive at the subject matter of a claim rejected for obviousness,¹⁰ it was often the applicant who invoked the TSM test in response to an obviousness rejection. In that respect, KSR raises the bar for the applicant; provided that a reason for combining the art can be articulated by the examiner, and that reason has a rational underpinning, the fact that the pending claims appear to pass the TSM test will likely be unpersuasive. However, applicants arguing against obviousness rejections may take comfort from the direction in KSR that explicit reasoning, and not mere conclusions, must be provided to support obviousness.

The evisceration of the TSM test also leads to other considerations in patent drafting. Because the motivation to combine prior art references is not restricted to the express teachings of the prior art, or even the inventor's own motivation to combine prior art elements, the need to draft a patent application around a "problem to be solved" is diminished. At best, any "problem to be solved" proffered in the patent application may be ignored by the examiner; at worst, the examiner may use the "problem to be solved" to conclude that the next logical or creative step for a skilled worker would be to solve the problem in the very manner claimed by the inventor.

The view from here

For Canadians, the immediate KSR effect will be limited to dealings with the USPTO and U.S. patents and applications. However, the influence of KSR may eventually reach into Canadian patent jurisprudence.

The classic definition of the notional skilled worker, against whom obviousness is measured, was given in Beloit Canada Ltd. v. Valmet OY: "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."¹¹ The Canadian test for obviousness is whether this "mythical creature" would, in light of the state of the art and common general knowledge, have arrived directly and without difficulty at the claimed solution.

Historically in Canada, it has been relatively difficult to invalidate a patent claim on the basis of obviousness-not surprising, as the person skilled in the art in Canada, unlike the KSR skilled person, is not even entitled to a scintilla of imagination. The severity of the Canadian obviousness test was criticized last year by the Federal Court in Janssen-Ortho Inc. et al. v. Novopharm Limited ("Janssen-Ortho"), as being "perilously close" to the test for anticipation.¹² The Janssen-Ortho court proposed a more principled obviousness analysis that considered a number of factors including motivation. While these factors were not necessarily new to Canadian patent jurisprudence, in this particular case the court gave significant emphasis to motivation:

What motivation existed at the time the alleged invention was made to solve a recognized problem? There may have been a general motivation such that everybody in the particular area was looking for a solution. The more unique and personal the motivation was, apart from any general motivation, the more one might be expected to be inventive. If motivation came from an outside source, and common place thought and techniques can come up with a solution, the less one is expected to have exercised inventive ingenuity.¹³

In setting out the motivation factor, the Federal Court specifically noted that the issue of motivation was to be considered by the U.S. Supreme Court in KSR; at the time, KSR's appeal had not been heard. However, unlike KSR, the motivation factor in Janssen-Ortho focussed on the source of the inventor's unique motivation to develop the invention. In its recently issued reasons for judgment affirming the trial decision, the Federal Court of Appeal noted that the factors set out in Janssen-Ortho were helpful as a guide to the required factual inquiry into obviousness and as a framework for analysis, but emphasized that it was not a mandatory list of rules.¹⁴

At this time in Canada, the person skilled in the art remains unimaginative, although susceptible to motivation and entitled to exercise common sense. While the Canadian test for obviousness is not on par with KSR, the direction of the trial decision in Janssen-Ortho suggests that Canadian patentees may find themselves considering that possibility in the next few years.

1. 127 S.Ct. 1727 (2007).

2. Graham v. John Deere Company of Kansas City, 86 S.Ct. 684 (1966).

3. KSR at 1741.

4. Teleflex, Inc. v. KSR Intern. Co., 119 Fed.Appx. 282, 288 (C.A.Fed. (Mich.), 2005).

5. KSR at 1741.

6. KSR at 1740, 1741.

7. KSR at 1741.

8. Hal Wegner, KSR-Induced PTO Obviousness Practice Changes (hwegner @ foley . com).

9. KSR at 1745.

10. Margaret A. Focarino, Deputy Commissioner for Patent Operations, Supreme Court decision on KSR Int'l. Co., v. Teleflex, Inc., memorandum to Technology Center Directors dated May 3, 2007.

11. Beloit Canada Ltée/Ltd. v. Valmet Oy (1986), 8 C.P.R. (3d) 289 (Fed. C.A.) at 294

12. Janssen-Ortho Inc. v. Novopharm Ltd. (2006), 2006 FC 1234 (F.C.) at paragraph 112.

13. Janssen-Ortho Inc. v. Novopharm Ltd., supra at paragraph 113(5).

14. Janssen-Ortho Inc. v. Novopharm Ltd. (2007), 2007 FCA 217 (F.C.A.) at paragraphs 25-26.