Graham v. John Deere Co.
15 L. Ed. 2d 545, 86 S. Ct. 684 (1966)
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Rule of Law:
Under 35 U.S.C. § 103, an invention is not patentable if the differences between the claimed invention and the prior art are such that the subject matter as a whole would have been obvious at the time of invention to a person having ordinary skill in the art. Section 103 codifies the judicial standard of non-obviousness established in Hotchkiss v. Greenwood, requiring a factual inquiry into the prior art, the invention's differences, and the level of skill in the art.
Facts:
- Case 1 (Graham): Chisel plows with rigidly attached shanks frequently broke in rocky soil.
- Case 1 (Graham): William Graham obtained a patent in 1950 ('811 patent) for a spring clamp that allowed the plow shank to ride over obstructions, but this design caused wear and allowed the shank to wobble.
- Case 1 (Graham): Graham later modified his design by inverting the shank and hinge plate and bolting the shank to the hinge plate to reduce wear and improve stability.
- Case 1 (Graham): Graham obtained a new patent ('798 patent) for this modified design, which John Deere Co. was later accused of infringing.
- Case 2 (Cook Chemical): Insecticide manufacturers faced a long-standing problem of creating an integrated, leak-proof pump sprayer that could be attached during automated bottling and shipped without leaking.
- Case 2 (Cook Chemical): Baxter Scoggin, working for Cook Chemical Co., developed a shipper-sprayer with a plastic overcap that screwed onto a collar, depressing the pump and creating a leak-proof seal for shipping.
- Case 2 (Cook Chemical): The seal was formed by a circular rib on the sprayer's collar engaging with a mating shoulder inside the overcap, and the overcap was designed to leave a space between its lower edge and the container cap.
- Case 2 (Cook Chemical): The shipper-sprayer was a significant commercial success, and Cook Chemical was granted a patent which Calmar, Inc. and Colgate-Palmolive Co. were accused of infringing.
Procedural Posture:
- Graham v. John Deere Co.: Graham sued John Deere Co. for patent infringement in U.S. District Court, which found the patent valid.
- Graham v. John Deere Co.: John Deere Co. (appellant) appealed to the U.S. Court of Appeals for the Eighth Circuit, which reversed the trial court, holding the patent invalid.
- Graham v. John Deere Co.: Graham (petitioner) was granted a writ of certiorari by the U.S. Supreme Court to resolve a circuit split.
- Calmar, Inc. v. Cook Chemical Co.: Calmar, Inc. and Colgate-Palmolive Co. filed separate actions in U.S. District Court for a declaratory judgment that Cook Chemical's patent was invalid.
- Calmar, Inc. v. Cook Chemical Co.: The trial court consolidated the actions and held that Cook Chemical's patent was valid.
- Calmar, Inc. v. Cook Chemical Co.: Calmar and Colgate-Palmolive (appellants) appealed to the U.S. Court of Appeals for the Eighth Circuit, which affirmed the trial court's ruling.
- Calmar, Inc. v. Cook Chemical Co.: Calmar and Colgate-Palmolive (petitioners) were granted a writ of certiorari by the U.S. Supreme Court.
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Issue:
Are patents for a plow clamp and a pump sprayer invalid for obviousness under 35 U.S.C. § 103 because the differences between the inventions and the prior art would have been obvious to a person with ordinary skill in the pertinent art?
Opinions:
Majority - Mr. Justice Clark
Yes, both patents are invalid for obviousness. The Patent Act of 1952, specifically § 103, did not lower the standard of patentability but codified the long-standing judicial precedent requiring an invention to be non-obvious. To determine non-obviousness, a court must undertake a factual inquiry into (1) the scope and content of the prior art, (2) the differences between the prior art and the patent claims, and (3) the level of ordinary skill in the art. Secondary considerations like commercial success and long-felt need can also be relevant. In the Graham case, reversing the position of the shank and hinge plate was an obvious solution to the known problems of wear and wobbling for a person skilled in mechanical design. In the Cook Chemical case, the key features—a seal above the threads and a space between the caps—were already disclosed in the prior art for similar closure devices (the Livingstone and Mellon patents). Combining these known elements to solve the leakage problem was obvious to a person skilled in the art of container closures.
Analysis:
This landmark decision established the definitive analytical framework for determining patent validity under the § 103 non-obviousness requirement, which remains the standard today. The 'Graham test' solidified the idea that non-obviousness is a question of law based on underlying factual determinations, providing a more structured and uniform approach than the vague 'invention' standard it replaced. By clarifying that § 103 was a codification of the Hotchkiss standard, the Court prevented a lowering of the bar for patentability and reinforced the constitutional goal of promoting genuine innovation. The case also gave formal weight to 'secondary considerations' like commercial success, framing them as useful, though not dispositive, evidence in the obviousness inquiry.
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