Graham v. John Deere (901422128)

Read for 1/31/11

Reading Notes

• Decided by the USCA in 1966
• Petitioner sued for infringement of a combination patent designed to absorb shocks on a plow
  • Circuit court held the patent valid because it produced an old result in a better way
  • USCA ruled the patent invalid because there was no new result
• Rundown of history of non-obviousness
• Also determined another patent for a plastic finger sprayer was invalid
  • Both would have been obvious to a person reasonably skilled
• First case dealing with non-obviousness in the USSC since A&P
• USSC maintains neither of the dissenting lower courts used the right test, but still help the patent invalid
  • Also upheld the decision in the case of the finger sprayer
• The problems in the two cases are essentially the same
• Maintain that 103 was not intended to change the standards, but rather to codify precedents
• Big difference between standards applied by the patent office and by the courts
  • Examiners have a free use of the word "invention"
• Long, in depth description of the shocks designed to protect the shanks of plows
  • Before Graham's patents, the plows would often get damaged in rocky soil
• Both lower courts found the prior art contained in one form or another all the elements of the current patent
  • Graham had a previous patent that was virtually identical so that his first attempt at a second patent was thrown out
    • Relied on a different feature in front of the examiner than in the courts
• USSC determined that the one change which was not disclosed in prior are was the only possible alternative to the given problem and therefore would have been obvious to a person of minimal skill
  • Also, this argument was never raised in the Patent Office

Secondary Case

• Plastic finger sprayer with a "hold-down" lid
  • First two claims of the patent are at issue here
• The history basically discloses the process by which two similar devices were simultaneous developed to fill the same need with one being patented before the other applied
  • Cook Chemical contends the invention was a unique combination, commercial success, cheapness, etc.
• Both lower courts help the patent valid
  • District Court seemed to think so because it solved a long-standing problem
  • Appeals Court found the combination novel because it took years of discovery and enjoyed immediate success
• Cite three instances of prior art
• Scoggin's first patent application was denied
  • Submitted a second, focusing on the sealing arrangement
  • Obtained his patent only by accepting limitation imposed by the examiner
• Determined the one slight change did not warrant a patent as a similar method had been used before
  • Didn't matter that it applied to liquids with pouring spouts rather than pumpers

Non-obviousness

• Patent clause is a grant of power and limitation
• Congress may set out conditions and tests for patentability
• Jefferson was huge with patent history
  • Recognized the social and economic rationale of the patent system - to bring forth new knowledge
• Oiginal patent board formed a set of patent rules
  • Congress stayed away from statutes other than novelty and utility
  • Hotchkiss first formulated a general condition for patentability - "invention"
• Act of 1952 laid out the conditions in three sections
  1. 101 and 102 - novelty and utility
  2. 103 - non-obviousness
  • Uses non-obvious instead of invention which is less clear