Intellectual Property, Pages 742–747

Graham v. John Deere Co.

Supreme Court of the United States, 1966

Facts:

Graham patented putting a spring on top of a plow's shanks so they can move and absorb the force from hitting things without breaking.

Procedural History:

This case caused a circuit split by itself.

  • The Fifth Circuit held that the patent was valid because it is patentable when a combination produces an "old result in a cheaper and otherwise more advantageous way."
  • The Eighth Circuit held that the patent was invalid because there was no new result in the patented combination.

Evaluation:

Neither court applied the correct test.

Issue:

What is required for something to be considered obvious?

Reasoning:

Thomas Jefferson strongly disliked monopolies but recognized the economic value that patents give. He did not believe in granting patents for small details, obvious improvements, or frivolous devices however. Although Congress waited almost 160 years to add to Jefferson's statutory requirements for a patent, in 1952 it added a third requirement of "nonobviousness." The legislative history shows that this was not intended to be a change in what is required to be patentable but was merely a codification of already-existing judicial precedents.

Rule/Holding:

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[T]he 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 surrounding the origin of the subject matter sought to be patented.

Judgment:

Eighth Circuit affirmed.

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