Graham invented a new
shock-absorber doo-dad to add to tractors. He got a patent. A few years
later, he made an improvement to the doo-dad and got a patent on the
improvement.
When John Deere began using a
similarly improved doo-dad on their tractors, Graham sued for infringement.
John Deere argued that
Graham's patent on the improvement was invalid because it failed the test
for nonobviousness.
The Trial Court found for John
Deere. Graham appealed.
The Appellate Court reversed.
Graham appealed.
In a similar case, Cook
Chemical was the holder of a patent on spray bottles. Colgate sued to
have Cook's patent declared invalid for because it failed the test for nonobviousness.
The US Supreme Court
consolidated the cases.
The US Supreme Court
invalidated both patents.
The US Supreme Court looked
to the Intellectual Property Clause
(Art. I, § 8, cl. 8), and found that patents were only
intended for those inventions which were new, useful, and furthered human
knowledge, rather than for small details and obvious improvements.
The Court looked to 35
U.S.C. §103, which codifies the nonobvious
requirement, and found that the factors for determining nonobiousness include:
The scope and content of
the prior art;
The differences between the
claimed invention and the prior art;
The level of ordinary skill
in the prior art;
Secondary considerations:
Commercial success;
Long felt but unsolved
needs; and
Failure of others.
These factors are now known
as the Graham Factors.
The Court applied these
factors to the two cases. They found both patents invalid because they
were obvious.
The Court found that
Graham's invention served the same purpose as those in the prior art.
Technically, they found
that Graham's improvement would be obvious to anyone who read Graham's
original patent. So his own patent was used as prior art against his new patent.
The Court found that differences
between Cook's design and the prior art were too minor and non-technical to be nonobvious.
