Graham v. John Deere (901422128)

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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


  • 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

Class Notes

  • For the first time since Act of 1952, the USSC made a statement on non-obviousness
  • Graham suing John Deere for infringement of a shock system that protects plows
    • District Court in 5th district said it was valid
    • Appellate Court in the 8th district said the patent was invalid
  • Did an engineering breakdown of the invention
    • Decided based on initial considerations, the swapping of positions of two parts was obvious and therefore the patent was invalid
  • Court says the standards have remained the same, now they are just codified
    • Language is different but idea is the same
  • Section 6 is the engineering analysis of the plow

Secondary Case

  • The current sprayer solved the problem of leaking and coming apart from the can
    • Used to not be integrated to the insecticide without leaking
    • Patent is essentially an overcap that attaches directly to the bottle cap with a seal and holds the pump mechanism in place
    • Detail that the patent focused on was the sealing mechanism involving the thread directly
  • USSC determined the patent was obvious based on prior art
    • As far as secondary considerations, the patent had met a long-felt need and enjoyed commercial success, but this was not enough – very secondary
  • Goodwine agrees!
    • Whether something is obvious or not should be an engineering consideration not a business one

Patent Law

  • Standard to submit an application that is intentionally broad in order to find out what the Examiner believes is necessary to get a patent
    • Concede certain points to get the patent, and cannot therefore argue these concessions later when trying to maintain the validity of the patent (file wrapper)


  • Section 103 requires more than ordinary skill to support a patent

Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances [383 U.S. 1, 18] surrounding the origin of the subject matter sought to be patented.

  • History as it related to Jefferson
    • Not a natural right of an inventor to own a monopoly but rather a reward
    • The nature of ideas cannot be controlled and therefore not based on natural law, but it is economic
  • Law exists not only in what is codified but also in accepted precedents and interpretations
  • The last sentence of 103 basically means that an invention does not require a “flash of genius”
    • Method of discovery is not important