Graham v. John Deere Co.

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Graham v. John Deere Co.
U.S.P.Q.
459
Case history
Prior
Holding
The nonobviousness requirement set forth in 35 U.S.C. § 103 was meant to codify the previous common law requirement that an invention be a significant improvement in the art.
Court membership
Chief Justice
Earl Warren
Associate Justices
John M. Harlan II
William J. Brennan Jr. · Potter Stewart
Byron White · Abe Fortas
Case opinion
MajorityClark, joined by Warren, Black, Douglas, Harlan, Brennan, White
Stewart and Fortas took no part in the consideration or decision of the case.
Laws applied
U.S. Const. Art. I, § 8, cl. 8, 35 U.S.C. § 103

Graham v. John Deere Co., 383 U.S. 1 (1966), was a case in which the

35 U.S.C. § 103.[2]

Although the Court confirmed that

questions of fact
to resolve the issue of obviousness:

  1. Scope and content of the prior art
  2. Differences between the claimed invention and the prior art
  3. Level of ordinary skill in the art

In addition, the Court mentioned "secondary considerations" which could serve as evidence of nonobviousness. These are known as "Graham's factors":

  1. Commercial success
  2. Long felt but unsolved needs
  3. Failure of others
  4. Unexpected results

The Court stated, that the purpose of these factors is to "guard against slipping into use of hindsight" when making a determination of obviousness.[3]

The

SCOTUS also proposed the inducement standard, suggesting that patent law's nonobviousness doctrine is meant to restrict the award of patents to only "those inventions which would not be disclosed or devised but for the inducement of a patent." Although, the Graham's factors have been cited numerous times by patent examiners and courts, the inducement standard has been largely ignored.[4]

Despite providing these useful guidelines, the Court also recognized that these questions would likely need to be answered on a case-by-case basis, first by the

KSR v. Teleflex
).

Facts and procedural history

The case was actually a set of consolidated

chisel plows as they plow through rocky soil and thus to prevent damage to the plow. Graham sought to solve this problem by attaching the plow shanks to spring clamps, to allow them to flex freely underneath the frame of the plow. He applied for a patent on this clamp, and in 1950, obtained U.S. patent 2,493,811 (referred to by the Court as the '811 patent). Shortly thereafter, he made some improvements to the clamp design by placing the hinge plate beneath the plow shank rather than above it, in order to minimize the outward motion of the shank away from the plate. He applied for a patent on this improvement, which was granted in 1953 as U.S. patent 2,627,798 (referred to by the court as the '798 patent). While Graham's patent had been upheld in a previous case before the United States Court of Appeals for the Fifth Circuit, the United States Court of Appeals for the Eighth Circuit reversed the opinion of the United States District Court for the Western District of Missouri and held that the patent was invalid and that the John Deere Co. had not infringed upon it.[5]

The other two actions which were consolidated with the Graham case, (No. 37, Calmar, Inc. v. Cook Chemical Co., and No. 43, Colgate-Palmolive Co. v. Cook Chemical Co.) were both

chemicals such as insecticides, and Colgate-Palmolive was a purchaser of these sprayers. Inventor Baxter I. Scoggin, Jr. had assigned his patent for sprayer design to Cook Chemical Co. Calmar and Colgate-Palmolive sought a declaration of invalidity and non-infringement of the patent, and Cook Chemical Co. sought to maintain an action for infringement. The validity of the patent was sustained by the District Court, and the Eighth Circuit affirmed.[6]

Decision

Background as to the patent law in the U.S.

See also: History of patent law and Economics and patents

Constitution itself, in the words of the Patents and Copyright Clause (Art. I, § 8, cl. 8
). Thus, Jefferson intended that the limited monopoly granted by a patent was only to be permitted in order to "promote the progress of science", rather than for small details and obvious improvements.

The Patent Act of 1952

Prior to the

utility for issuance of patent, and never created any statutory requirement of nonobviousness. However, the U.S. Supreme Court, in the case of Hotchkiss v. Greenwood,[7]
invalidated a patent on the grounds that it involved only a substitution of materials rather than any real innovation. The Hotchkiss court effectively added the requirement of nonobviousness, and it had been left to the judiciary to determine whether the patent involved non-obvious invention. Following that case, the Supreme Court issued myriad decisions with an evolving and unpredictable standard for obviousness. It was not until the Congress enacted the Patent Act of 1952 that the test was to be given with some degree of predictability.

The Patent Act of 1952 added

35 U.S.C. § 103,[2] which effectively codified nonobviousness as a requirement to show that an idea is suitable for patent protection. The section essentially requires a comparison of the subject matter sought to be patented and the prior art, to determine whether or not the subject matter of the patent as a whole would have been obvious, at the time of the invention, to a person having ordinary skill in the art
. Clark held that the Congress, in passing the Act, intended to codify and clarify the common law surrounding the Patent Act by making explicit the requirement of nonobviousness.

Application of the law to the facts

Clark then examined the

claims which differed between the two patents were (1) the stirrup and the bolted connection of the shank to the hinge plate do not appear in '811; and (2) the position of the shank is reversed, being placed in patent '811 above the hinge plate, sandwiched between it and the upper plate. One argument which Graham raised before the court, but had not raised before the USPTO, was that in the new '798 design, the flexing of the plow shank was limited to the points between the spring clamp and the tip of the plow shank, absorbing the shock of hard objects on the ground more efficiently. The court rejected this argument and invalidated the '798 patent for two reasons: first, Graham had not raised this "flexing" argument before the USPTO, and second, the parts in the '798 patent served the same purposes as those in the prior art.[8]

In the matters concerning Cook Chemical, Scoggin, a

washer or gasket, to maintain a seal, as well as the existence of a small space between the overcap and the sprayer. Clark held that because Scoggin narrowed his claims to meet the limitations requested by the patent examiner, Cook Chemical could not now claim broader subject matter (see Prosecution history estoppel
). Clark further held that the differences between Scoggin's design and the prior art were simply too minor and non-technical to maintain the validity of Cook's patent.

A companion case, United States v. Adams, was argued the same day and—in contrast to the holding in Graham v. Deere—held that non-obviousness was satisfied.

Graham establish practical criteria of determining of what patent claims are non-obvious. Another

SCOTUS case, that followed in 2007, KSR International Co. v. Teleflex Inc.
, clarified what is obvious.

Notes

  1. ^ Graham v. John Deere Co., 383 U.S. 1 (1966).
  2. ^ a b 35 U.S.C. § 103.
  3. ^ "Objective Indicia of Nonobviousness – Considered as Part of a "Totality of the Evidence" Approach or a "Prima Facie Framework"?".
  4. ^ Abramowicz, M. and J. F. Duffy (2011). "The Inducement Standard of Patentability." Yale Law Journal 120(7): 1590-1680. http://www.jstor.org/stable/41149576;
  5. 8th Cir.
    1964).
  6. 8th Cir.
    1964).
  7. ^ Hotchkiss v. Greenwood, 52 U.S. 248 (1850).
  8. ISSN 0040-4187
    . Retrieved June 6, 2016. I had hardly commenced my argument when Justice Black rose up in his chair and in effect said to me, "Mr. Morris, what difference does it make whether the shank bends away from the plate or against the plate?" I responded, "It makes no difference whatsoever," and Justice Black said, "That's what I thought." In view of that remark, I shortened my argument, and the court ask me very few questions

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