Summary
Apotex appealed a decision allowing Pfizer's application for a prohibition order relating to a Viagra® patent.
Two days prior to the hearing, Apotex advised that that it would only pursue its appeal on the issue of obviousness, relying upon what it characterized as the "worth a try" test allegedly established by the Supreme Court in its 2008 decision on Apotex Inc. v. Sanofi-Synthelabo Canada Inc., 2008 SCC 61 (Sanofi).
The Court of Appeal first identified the test from Sanofi as being the "obvious to try" test, where the word "obvious" meant "very plain." According to this test, an invention is not made obvious because the prior art would have alerted the person skilled in the art to the possibility that something might be "worth trying." Instead, the invention must be more or less "self-evident."
The Court of Appeal held that, contrary to Apotex's arguments, the trial judge had not erred. Rather, he had correctly rejected the contention that the invention was obvious based on "mere possibilities or speculation," and had correctly looked for evidence that the invention was more or less "self-evident." The trial judge further held that the most he could gather from the prior art at the priority date was that key aspects of the invention were "worth a try." It was apparent he had looked for more than "mere possibilities," with the understanding that they were not enough and that the prior art had to show more than that.
In so holding, the trial judge drew the line precisely where the Supreme Court drew it in Sanofi when it held that "the mere possibility that something might turn up is not enough."
Apotex also urged the Court to accept the English Court of Appeal's pronouncement that where the motivation to achieve a result is very high, the degree of expected success becomes a minor matter. In such circumstances, the skilled person may feel compelled to pursue experimentation even though the chances of success are not particularly high.
However, the Court of Appeal held that this approach was based on the possibility that something might work, which was expressly rejected in Sanofi. The English test appears to be met if the prior art indicates that something may work, and the motivation is such as to make this avenue "worthwhile" to pursue. As such, a solution may be "worthwhile" to pursue even though it is not "obvious to try" or "more or less self-evident" as required by Sanofi.
Accordingly, the appeal was dismissed.
Commentary
Though patent challengers may contend that in Sanofi the Supreme Court has expanded the grounds of an obviousness attack by adopting the "obvious to try test," it is equally important be mindful of the Supreme Court's caveat that the test "is not a panacea for alleged infringers." The Court of Appeal's decision confirms that in the "obvious to try" test, an invention is not made obvious because the prior art would have cued the skilled person to the possibility that something might be worth trying. Mere possibilities are not enough. Rather, the invention must be more or less self-evident.
Also, the Federal Court of appeal recognized that the test is Canadian-made and is not equivalent to the "worth a try test" adopted in the UK. Whereas the English test appears to be satisfied if something may work, the Canadian test will only be satisfied if it is self-evident. Thus, though one of the stated goals of Sanofi in adopting the "obvious to try" test is to bring Canadian caselaw in synch with American and English law, the UK jurisprudence is ultimately of limited value since the Canadian test is distinct from its English counterpart.
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