Snooki Homework due 2/4/11
Assume it is 2015 and you work for one of the companies in either the Graham or Adams case. Your corporate counsel has approached you to get information needed for litigation about why the patent being litigated is or is not obvious in light of the prior art. Based only on the two patents you read for Wednesday's assignment, write an analysis providing all the reasons supporting a conclusion of non-obviousness and an analysis providing all the reasons supporting a conclusion of invalidity of the patent under 103. That is, give both sides of the argument.
William Graham filed US Patent No. 2,627,798 for a clamp for a vibrating shank plow in 1951. The patent created a way for plow shanks to pass obstructions without issue. This was accomplished by allowing the plow shank to be pushed upward through the use of a hinge. In this new patent Graham reference a previous patent he had been granted. However, the only new aspects to the design were that the shank had been moved to below the hinge and a stirrup and connection had been added to the hinge.
Argument for Nonobviousness
U.S.C. 103 states “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. Patentability shall not be negatived by the manner in which the invention was made.” Previously, Graham had failed to prove the nonobvious nature of his device in court. He was unable to convince the court that the hinge in the ‘798 patent, despite a new plate and support concept, was a new aspect to a shank plow. It is clear, however, that because of the reduction of forces and as a result the reduction of wear on the plow, that this device was an improvement on the previous devices. Such an improvement is extremely desirable for one using plow shanks which shows a need for the new device. This new patent made the necessary improvements to old patent (‘811) to create a better mechanism for plow shanks. He had solved the need for reduced forces and wear on the plow which would thus improve plow life. Such an improvement is nonobvious based on the lack of previous effective mechanisms despite the need for them. Although the changes made from the ‘811 patent may seem simple and inconsequential it clearly took Mr. Graham time and effort to improve on the ‘811 patent. It would take him time to detect wear and then to create a solution which would improve the wear occurring on the ‘811 device. The time and effort which were required for the improvement were substantial and result in a very improved device, despite the seemingly simply modification made for the ‘798 patent. The time and effort required show the necessary thought and skill it took to improve the ‘811 patent. Such time and effort would not be required of an obvious solution. Additionally, even someone educated in the field may not see the advantages to the improvements made for the ‘798 patent. It is not obvious that the location of the hinge would result in such drastic improvement. The new design took thought above the average mechanic in the field and resulted in advantages clear to every expert and nonexpert alike. Due to these reasons this patent should uphold nonobviousness and remain valid.
Argument Against Nonobviousness
Mr. Graham made submitted the ‘798 patent with ‘improvements’ on the ‘811 patent. The ‘improvement’ consisted of little more than a new hinge. This hinge closely resembled hinges in similar patents such as the hinge seen in the Glencoe patent. The new patent should not be patentable with the known previous art at the time. The only changes from the ‘811 patent were the bolted connections to the hinge and the position. Glencoe had already created a shank in which forces and wear were being deflected along a plane instead of a point. Graham’s design was different in that the wear point was in a different location than in the Glencoe design, however, it is still a similar idea and design. It would appear that the ‘798 patent is little more than a combination of Graham’s own ‘811 patent and Glencoe’s ‘076 patent. Additionally, the improvement in the ‘798 hinge is not of nonobvious nature. It is clear to an engineer that to reduce wear on a point one must spread out the forces over an area. It would be obvious to an engineer that spreading forces out would result in reduced wear and better tool life by adding a hinge. His only major difference in the patent is the added flexibility of his design. However, this aspect was not an aspect to his design which he claimed for patentability. Graham combined previous patents with minor alterations to claim a new device. Such combinations were not greater than the previous prior art and offered no creativity or particular skill in the art. Given the advantages to the Glencoe patent the next improvement on the ‘811 patent would clearly be to reduce wear. The method of doing this would be obvious to an engineer as would the reason for the improvement. There was little new thought in the ‘798 patent and it was mostly comprised of previously patented devices. There is no new aspect which would not be obvious to an average engineer and as such this patent is clearly invalid.