Nonobviousness
Patent Law
Prof. Merges – 10.11.2012
Basic policy: why do we need
section 103?
• Why not just rely on novelty?
• Take In re Robertson as an example
• Imagine a series of minor, novel,
improvements on the diaper design in
Robertson
Robertson ‘604 Patent
Securing Tab
Robertson ‘604 Patent
Securing Tab,
with fold
Robertson ‘604 Patent
Securing Tab
Robertson ‘604 Patent
Securing Tab
What is the downside of
allowing all these minor
patents?
What is the downside of
allowing all these minor
patents?
• Building on expired patents
• Transaction costs: reducing the number of
potential licenses you need to sell a given
product
• Restricting rights for deserving cases only
Technically trivial patents can
create high costs
• The Selden automobile patent – a case
in point
Hotchkiss
Hotchkiss
Hotchkiss
“[U]nless [there is proof of] more
ingenuity and skill … than were
possessed by an ordinary mechanic
acquainted with the business, there
was an absence of that degree of skill
and ingenuity which constitute
essential elements of every invention.
In other words, the improvement is the
work of the skilful mechanic, not that
of the inventor.”
Graham v. John Deere
• Background
• Supreme Court Opinion
• Federal Circuit adaptation
Figure 1: The Hoeme Cultivator
Duffy and Merges, 2006
The Graham-Hoeme
Chisel Plow
• It was designed by Fred Hoeme to leave large clods of
soil resistant to wind erosion.
• The patent was issued in 1936, within twelve months of
application.
• Hoeme manufactured 2000 plows before 1939.
• In 1939, Hoeme sold the rights to his invention to William
T Graham for $38,000.
• Graham started the Graham-Hoeme Plow Company.
• In 2000, the American Society of Agricultural Engineers
recognized the development of the “Graham-Hoeme”
chisel plow as one of the most significant developments
in agricultural engineering in the United States.
I Beam (Plow Frame)
Plow Shank
Clamp
Threaded Hole
Clamping Screw
Plow Chisel
Figure 2
Hoeme’s Clamp
• One of Hoeme’s first patents was a patent
covering the clamp that attached each plow
shank to the metal “I”-shaped beams of the
plow carriage.
• This clamp worked fine for farming in the
Great Plains, where soil is largely free of
rocks.
• When Graham sold the plow in northern
states, rocks in the soil caused damage not
only to the plow bit, the shank, and the clamp,
but also to the I-beam.
• This damage would result in failure of the
product.
Graham’s First Solution
Attempt
• Graham substituted a reinforced “brace
clamp” that would distribute the forces of
rock collisions across the entire I-beam.
• While this brace tended to prevent the lower
flange of the I-beam from bending, it did
nothing to protect the chisel and the shank.
– The shank and chisel would actually fail more
rather than less frequently.
• The clamp was too simple, so courts held the
patent invalid for obviousness.
Figure 3: Graham’s first improved clamp for the Hoeme chisel
plow. The added brace (13) distributes the forces from the plow
shank (11) toward the upper portion of the I-beam (10) and
thereby protects the lower flange of the I-beam (10a).
First solution to shank-breakage
problem: reinforcing brace
clamp
Graham’s Spring Clamp
• Graham’s second attempt at solution was
more successful.
• He added a spring mounting so that the
clamp would give way when the forces on
the shank were too great.
• This invention successfully reduced
bending and breaking of plow parts in
rocky soil.
• This invention also produced vibratory
action that created alternating pockets
and ridges that were capable of storing
moisture that could sustain crops during
dry periods.
Figure 4: Graham ‘811 Spring Clamp. The spring (66) at the front end of
the clamp holds the plow shank flat against the I-beam frame. The shank
is pivoting against the rear of the clamp and the pivoting compresses the
spring.
The ‘811
Graham
Plow
Graham’s ‘811 Patent
• Graham began marketing the clamp in the late
1940s or early 1950s, and continued producing it,
with some modifications, for at least a decade
and a half.
• Some flaws became apparent with the design
over time:
– The shank would rub against the fixed upper plate of the
clamp and cause wear. This wear was troublesome
because the plate was connected directly to the frame of
the plow and was difficult to replace.
– The shank was held within the clamp only by the spring
rod with a large hole. As it was pulled backwards, it
would cause wear and damage in the spring rod.
Graham’s second (‘798)
Patent
• Wear against upper plate and spring rod
provided impetus for design of new clamp.
• This is the patent at issue in Graham’s suit
against John Deere.
• Changes in the clamp:
– Hinge plate has been moved above the shank so
that the shank does not come into contact with
the fixed upper plate.
• Graham conceived of the design in 1950 but
did not file patent application until August
27, 1951.
Figure 7: The spring Clamp from Graham’s ‘798 patent (unassembled and assembled
views). A nut and bolts (56, 56’, and 56”) and a stirrup (57) have been added to secure the
shank (8) to the hinge plate (12). Also, the hinge plate is placed above the shank so that the
shank does not come into c ontact with the fixed upper plate (13).
Figure 4: Graham ‘811 Spring Clamp. The spring (66) at the front end of
the clamp holds the plow shank flat against the I-beam frame. The shank
is pivoting against the rear of the clamp and the pivoting compresses the
spring.
Graham’s ‘798 Patent
• Examiner allowed the
patent to be issued with
two claims in February of
1953.
Justice Tom Clark (1899-1977)
Clark Trivia
"It's not that he's a bad man," rued [Pres.
Harry] Truman. "It's just that he's the
dumbest sonofabitch I ever met." Clark
resigned in 1967 to avoid any question
of conflict of interest after President
Lyndon B. Johnson appointed Clark's
son, Ramsey, to serve as Attorney
General.
35 USC Sec 103
§ 103. Conditions for patentability; nonobvious subject matter
(a) A patent may not be obtained though the
invention is not identically disclosed or
described as set forth in section 102 of this
title, if the differences between the subject
matter sought to be patented and the prior
art are such that the subject matter as a
whole would have been obvious at the time
the invention was made to a person having
ordinary skill in the art to which said subject
matter pertains. Patentability shall not be
negatived by the manner in which the
invention was made.
Graham points
• “[T]he 1952 [patent law] revision was
not intended to change the general
level of patentable invention.
• Ultimate question of patentability is one
of law; lends itself to “several basic
factual inquiries”
The Graham Test
• Scope and content of the prior art
• Difference between the prior art and the
claims at issue
• Level of ordinary skill in the pertinent
art
Graham v. John Deere
Is it obvious to move the hinge plate from
position A under the shank to position B above
the shank?
B
A
US v. Adams
• 383 U.S. 39 (1966)
• Part of the “Graham Trilogy”
Bert Adams’ battery: claim
elements
1.Magnesium (positive) electrode
2.Cuprous Chloride (negative) electrode
3.Liquid container
Quick Review – Prior Art
• Niaudet treatise – zinc anode, silver
chloride cathode; ammonium chloride
electroltye: continuous current
• Wood: substitute magnesium for zinc; use
“neutral” electrolyte
• Wensky: copper terminal, cuprous chloride
in electrolyte solution
Adams Claim Chart
Continuous
Current
Niaudet
Wood
Wensk
y
Magnesium Elec Cupruous
Trode
Chloride
X
X
X
Adams Claim Chart
Continuous
Current
Niaudet
Wood
Wensk
y
ADAMS
Magnesium Elec Cupruous
Trode
Chloride
UnexpectEd Perf.
X
X
X
X
United States v. Adams
• The Court noted (among other things):
–“The court below found, and the
Government apparently admits, that
the Adams battery “wholly
unexpectedly” has shown “certain
valuable operating advantages over
other batteries” while those from
which it is claimed to have been
copied were long ago discarded.”
The government’s argument in the
merits brief is only eight and a half
pages long, with more than half of
that space being devoted to the
argument that the Adams battery
was not novel — a position the
government had conceded away in
its petition!
Secondary considerations
• “Might be utilized . . .”
• Commercial success
• Long felt need
• Failure of other
Graham
“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. As indicia of obviousness or
nonobviousness, these inquiries may
have relevancy.”
Federal Circuit: Post-Graham
1. Elevation of “secondary” factors to 4th
Graham factor
2. “Reasonable expectation of success”
standard – ex ante perspective
3. Development of Suggestion Test –
may be reviewed by Supreme Court
Federal Circuit and Secondary
Factors
• Elevation of “secondary factors” to a
de facto “4th Graham factor”
– See, e.g., Hybritech v Monoclonal
Antibodies, Inc.
– “objective evidence must be considered
before a conclusion on obviousness”
Federal Circuit: Post-Graham
1. Elevation of “secondary” factors to 4th
Graham factor
2. “Reasonable expectation of success”
standard – ex ante perspective
3. Development of Suggestion Test –
KSR
Federal Circuit – post-Graham
For the Johnson article to render the
claimed invention obvious, there must
have been, at the time the invention
was made, a reasonable expectation of
success in applying Johnson's
teachings.
Life Technologies, Inc. v. Clontech
Laboratories, 224 F.3d 1320 (Fed Cir 2000)
The Graham Test
• Scope and content of the prior art
• Difference between the prior art and the
claims at issue
• Level of ordinary skill in the pertinent
art
In re O'Farrell, 853 F.2d 894, 903
(Fed.Cir.1988)
“Obvious to try” is NOT the appropriate standard
While absolute certainty is not necessary to
establish a reasonable expectation of success, In
re O'Farrell, 853 F.2d 894, 903-04, (Fed.Cir.1988),
there can be little better evidence negating an
expectation of success than actual reports of
failure. A reasonable jury could conclude from
these reports that one of ordinary skill in the art
would not have had a reasonable expectation of
success . . . – Life Technologies, supra.
Updating Graham III
Velander v. Garner, 348 F.3d 1359 (Fed.
Cir. 2003)
How is “reasonable expectation of
success” applied?
A method for producing biocompetent
fibrinogen comprising:
providing a transgenic female nonhuman mammal carrying in its
germline heterologous DNA segments
Aα, Bβ, and γ chains of fibrinogen,
wherein said segments are expressed
in a mammary gland of said mammal
and biocompetent fibrinogen encoded
by said segments is secreted into milk
of said mammal; collecting milk from
said mammal; and recovering said
biocompetent ….
Garner also argued that one of ordinary skill in
the art would have had a reasonable
expectation of success in producing
biocompetent fibrinogen in the milk of
transgenic animals in view of the prior art
showing successful production of transgenic
animals capable of expressing heterologous
proteins in biologically active form. As support
for that proposition, Garner cited several
authorities [e.g., Greenberg et al., Expression of
Biologically Active Heterodimeric Bovine
Follicle-stimulating Hormone in Milk of
Transgenic Mice, 88 P.N.A.S. 8327 (1991)]
Garner
The presence of a reasonable
expectation of success is measured
from the perspective of a person of
ordinary skill in the art at the time the
invention was made. Claims here
were obvious.
Merges, “Uncertainty and the Standard of
Patentability,” 7 [Berkeley] High Tech.
L.J. 1 (1993).
Updating Graham
A showing of obviousness requires [1] a
motivation or suggestion to combine or
modify prior art references, coupled
with [2] a reasonable expectation of
success.
-- Brown & Williamson Tobacco Corp. v.
Philip Morris Inc., 229 F.3d 1120, 112425, (Fed.Cir.2000)
Federal Circuit: Post-Graham
1. Elevation of “secondary” factors to 4th
Graham factor
2. “Reasonable expectation of success”
standard – ex ante perspective
3. Development of Suggestion Test –
KSR case
Doctrine Recap
• Post-Graham: The “three-part test”
• Early Federal Circuit
– The “objective indicia” or secondary
considerations
• Recent Developments
– Reasonable expectation: ex ante perspective
– The ups and downs of the
“suggestion/motivation test”