EB: GRAHAM v. JOHN DEERE, 383 U.S. 1 (1966)

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Situation

  • Graham was granted a patent ('789)for a "spring clamp which permits plow shanks to be pushed upward when they hit obstructions...and then springs the shanks back into normal position when the obstruction is passed over"
  • Graham files precursor patent ('811) in 1950 with same general purpose, but makes inprovements and files for another patent ('789) in 1953.
    • In many cases an inventor might try to file a very broad patent - if rejected, then he will narrow the patent
    • A file wrapper means that you conceded certain things about your original patent in order to be granted the more narrow one - so, when you sue for infringement you have to comply to the things that you agreed upon in the file wrapper

Accusation

  • John Deere Co. is accused of patent ('789) infringement
  • Tried in the Eighth Circuit U.S. Court of Appeals

Decision

  • Graham's patent is invalid as all facets of the device are found to be obvious given the prior art.
  • In order to determine non-obviousness, a court must determine the state of the prior art, the differences between the prior art and the claims, and the level of skill of one of ordinary skill in the art, and, taking into consideration any secondary factors, determine if the claims are patentable.
  • Underlying principle (as initiated by Jefferson): Congress cannot "enlarge the patent monopoly without regard to the innovation, advancement, or social benefit gained thereby"

Reasoning

  • The two patents differ: (1) Old patent did not have "the stirrup and the bolted connection of the shank to the hinge" (2)The position of the shank is reversed
  • Graham argues that new patent has "greater 'flexing'" - "free-flexing" and that the reversal of the hinge-shank orientation "permits the shank to flex under stress for its entire length"
  • Court rules that "Certainly a person having ordinary skill in the prior art, given the fact that the flex in the shank could be utilized more effectively if allowed to run the entire length of the shank, would immediately see that the thing to do was what Graham did, i.e., inver the shank and the hinge plate"
    • "We find no nonobvious facets in the '798 arrangement"

A Conjoined Case: Calmar, Inc. v. Cook Chemical Co.

Situation

  • Cook Chemical employee, Scoggin, was granted a patent for a "shipper-sprayer" in 1959 (had been working on it since 1956)
    • Finger operated pump sprayer-unscrews and discards overcap, the pump plunger springs up and the sprayer is ready for use
  • Calmar's engineers created a similar shipper-sprayer and in 1958 began to market the "SS-40"

Accusation

  • Cook Chemical sued Calmar's SS-40 with infringement

Decision

  • District: patent valid, Appeals: patent valid
  • U.S. Supreme Court: Scoggin's invention was obvious, and therefore the patent is invalid

Reasoning

  • The claimed "unique" space between the skirt and the overcap, "appears quite plainly" on a prior divice (Livingstone liquid pouring spouts pump sprayer)
  • Although Cook Chemical argued that a shipper-sprayer like Scoggins had long eluded Calmar, but court rules that Scoggin's device "rests upon exceedingly small and quite nontechnical mechanical differences in a device which was old in the art.
    • "Differences between them [Scoggins patent] and the pertinent prior art would have been obvious to a person reasonably skilled in that art