Graham v. John Deere Co.
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| Graham v. John Deere Co. | |||||||||||
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| Argued October 14, 1965 Decided February 21, 1966 |
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| 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: Hugo Black, William O. Douglas, Tom C. Clark, John Marshall Harlan II, William J. Brennan, Potter Stewart, Byron White, Abe Fortas |
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| Case opinions | |||||||||||
| Majority by: Clark Joined by: Douglas, Black, Harlan, Brennan, White, Warren Stewart and Fortas took no part in the consideration or decision of the case. |
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| 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 United States Supreme Court clarified the nonobviousness requirement in United States patent law, set forth in 35 U.S.C. § 103.
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[edit] Facts and procedural history
The case was actually a set of consolidated appeals of two cases, originating in the same court and dealing with similar issues. The named petitioner, William T. Graham, had sued the John Deere Co. for patent infringement. The invention in question was a combination of old mechanical elements: a device designed to absorb shock from the shanks of 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 No. 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 No. 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.
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 declaratory judgment actions filed contemporaneously against Cook Chemical Company. Calmar was a producer of “hold-down” sprayers for bottles of 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.
[edit] Decision
[edit] Examination of the background of U.S. Patent Law
- See also: History of patent law and Economics and patents
Justice Clark, writing for the majority, first briefly explained the history and policy behind U.S. patent law, beginning with the Patent Act of 1790. He explained that U.S. patent law was originated by Thomas Jefferson, who based his ideas on patent law on the utilitarian economic concern of promoting technological innovation rather than protecting inventors’ moral rights to their discoveries. This was largely because Jefferson was quite suspicious of monopolies. This legal theory was embodied in the words of the Constitution itself, in the words of the Intellectual Property Clause (Art. I, § 8, cl. 8). Thus, Jefferson intended that the limited monopoly granted by a patent was only to be permitted for those inventions which were new, useful, and furthered human knowledge, rather than for small details and obvious improvements.
[edit] Effect of the Patent Act of 1952
Prior to the Patent Act of 1952, Congress kept only the requirements of novelty and utility, and never created any formal statutory requirement of nonobviousness. The U.S. Supreme Court, however, in the case of Hotchkiss v. Greenwood, 52 U.S. 248 (1851), 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, which had been left to the courts by Congress, requiring an examination of the subject matter of the patent and the background skill of the trade involved.
The Patent Act of 1952 added 35 U.S.C. § 103, which added the statutory requirement of nonobviousness. The section essentially requires a comparison of the subject matter sought to be patented and the prior art, in order to determine whether or not the subject matter of the patent as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art. Clark held that Congress, in passing the Act, intended to codify and clarify the common law surrounding the Patent Act by making explicit the requirement of nonobviousness.
Although patentability is a matter of law, the court held that §103 required a determination of the following questions of fact to resolve the issue of obviousness:
- the scope and content of the prior art;
- the level of ordinary skill in the prior art;
- the differences between the claimed invention and the prior art; and
In addition, the Court “secondary considerations” which could serve as indicia of nonobviousness. They include:
- commercial success;
- long-felt but unsolved needs; and
- failure of others.
However, the court also recognized that these questions would likely need to be answered on a case-by-case basis, first by the United States Patent and Trademark Office (USPTO), then by the courts.
[edit] Application of the law to the facts of the case
Clark then examined the prosecution history and prior art of both sets of patents involved in the case. In the Graham case, the 798 patent was originally rejected by the patent examiner as being insufficiently distinguished from the previous 811 patent. The only two 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, which he did not raise 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 in a more efficient fashion. 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 the parts in the 798 patent served the same purposes as those in the prior art.
In the matters concerning Cook Chemical Co., Scoggin (a corporate officer at Cook) had originally based his design on Calmar’s previous unpatented design, but later claimed that his integration of the sprayer and container solved the problem of external leakage during assembly and shipping of insecticide products. The district court held that Scoggin’s sprayer was not obvious because even though its individual elements were not novel, nothing in the prior art would have suggested his combination of elements. After the initial rejection of his patent, Scoggin drafted his claims more carefully in order to distinguish the prior art, limiting his new claims to the use of a rib seal, rather than 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 difference’s between Scoggin’s design and the prior art were simply too minor and non-technical to maintain the validity of Cook’s patent.
[edit] See also
- KSR v. Teleflex (2006)
