Graham v. John Deere Co.

Graham v. John Deere Co.
Supreme Court of the United States
Argued October 14, 1965
Decided February 21, 1966
Full case nameWilliam T. Graham, et al. v. John Deere Co. of Kansas City, et al., together with No. 37, Calmar, Inc. v. Cook Chemical Co., and No. 43, Colgate-Palmolive Co. v. Cook Chemical Co., also on certiorari to the same court.
Citations383 U.S. 1 (more)
86 S.Ct. 684; 15 L. Ed. 2d 545; 1966 U.S. LEXIS 2908; 148 U.S.P.Q. 459
Case history
Prior
  • Graham v. John Deere Co., 216 F. Supp. 272 (W.D. Mo. 1963); reversed, John Deere Co. v. Graham, 333 F.2d 529 (8th Cir. 1964); cert. granted, 379 U.S. 956 (1965).
  • Calmar, Inc. v. Cook Chemical Co., 220 F. Supp. 414 (W.D. Mo. 1963); affirmed, 336 F.2d 110 (8th Cir. 1964); cert. granted, 379 U.S. 956 (1965).
Holding
The nonobviousness requirement set forth in 35 U.S.C. § 103 was meant to codify the previous common law requirement that an invention be a significant improvement in the art.
Court membership
Chief Justice
Earl Warren
Associate Justices
Hugo Black · William O. Douglas
Tom C. Clark · John M. Harlan II
William J. Brennan Jr. · Potter Stewart
Byron White · Abe Fortas
Case opinion
MajorityClark, joined by Warren, Black, Douglas, Harlan, Brennan, White
Stewart and Fortas took no part in the consideration or decision of the case.
Laws applied
U.S. Const. Art. I, § 8, cl. 8, 35 U.S.C. § 103

Graham v. John Deere Co., 383 U.S. 1 (1966), was a case in which the United States Supreme Court clarified the nonobviousness requirement in United States patent law,[1] set forth 14 years earlier in Patent Act of 1952 and codified as 35 U.S.C. § 103.[2]

Although the Court confirmed that non-obviousness is a question of law, it held that §103 required a determination of the following questions of fact to resolve the issue of obviousness:

  1. Scope and content of the prior art
  2. Differences between the claimed invention and the prior art
  3. Level of ordinary skill in the art

In addition, the Court mentioned "secondary considerations" which could serve as evidence of nonobviousness. These are known as "Graham's factors":

  1. Commercial success
  2. Long felt but unsolved needs
  3. Failure of others
  4. Unexpected results

The Court stated, that the purpose of these factors is to "guard against slipping into use of hindsight" when making a determination of obviousness.[3]

The SCOTUS also proposed the inducement standard, suggesting that patent law's nonobviousness doctrine is meant to restrict the award of patents to only "those inventions which would not be disclosed or devised but for the inducement of a patent." Although, the Graham's factors have been cited numerous times by patent examiners and courts, the inducement standard has been largely ignored.[4]

Despite providing these useful guidelines, the Court also recognized that these questions would likely need to be answered on a case-by-case basis, first by the United States Patent and Trademark Office (USPTO), then by the courts. The "non-obviousness criteria" laid out in Graham were complemented in 2007 by "obviousness criteria" in another US Supreme Court case (see KSR v. Teleflex).

  1. ^ Graham v. John Deere Co., 383 U.S. 1 (1966).
  2. ^ 35 U.S.C. § 103.
  3. ^ "Objective Indicia of Nonobviousness – Considered as Part of a "Totality of the Evidence" Approach or a "Prima Facie Framework"?".
  4. ^ Abramowicz, M. and J. F. Duffy (2011). "The Inducement Standard of Patentability." Yale Law Journal 120(7): 1590-1680. http://www.jstor.org/stable/41149576;