Graham v. Deere

Citation: Graham v. John Deere Co., 383 U.S. 1 (1966)(full-text).

Factual Background
The case was a consolidated appeal 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 a patent (referred to by the Court as the '811 patent).

Shortly thereafter, Graham 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 (referred to by the Court as the '798 patent). While Graham’s patent had been upheld in a previous case before the U.S. Court of Appeals for the Fifth Circuit, the Eighth Circuit 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 the 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 patent infringement. The validity of the patent was sustained by the District Court and the Eighth Circuit affirmed.

Background on U.S. patent law
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 U.S. 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.

Patent Act of 1952
Prior to the Patent Act of 1952, the Congress required only novelty and utility for issuance of patent, and never created any statutory requirement of nonobviousness. However, the U.S. Supreme Court, in Hotchkiss v. Greenwood, 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, and it had been left to the judiciary to determine whether the patent involved a non-obvious invention. Following that case, the Supreme Court issued myriad decisions with an evolving and unpredictable standard for obviousness. It was not until Congress enacted the Patent Act of 1952 that the test was to be given with some degree of predictability.

The Patent Act of 1952 added 35 U.S.C. §103, which effectively codified nonobviousness as a requirement to show that an idea is suitable for patent protection. The section essentially requires a comparison of the subject matter sought to be patented and the prior art, to determine whether or not the subject matter of the patent as a whole would have been obvious, at the time of the invention, 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:


 * 1) the scope and content of the prior art;
 * 2) the differences between the claimed invention and the prior art; and
 * 3) the level of ordinary skill in the prior art.

In addition, the Court mentioned “secondary considerations,” which could serve as evidence of nonobviousness. They include:


 * 1) commercial success;
 * 2) long felt but unsolved needs; and
 * 3) 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 U.S. Patent and Trademark Office (USPTO), then by the courts.