Graham v John Deere

3.15.04

Patent Law

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; non-

obvious 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

– P. 677

Secondary consdiderations

• “Might be utilized . . .”

• Commercial success

• Long felt need

• Failure of other

Hinge Plate

Shank

Upper Plate

Graham v. John DeerePrior Art: ‘811 Patent

Upper Plate

Hinge Plate

Shank

Graham v. John DeereClaimed Invention ‘798

(Modified ‘811 Patent)

Graham v. John DeereIs it obvious to move the hinge plate from position A under the shank to position 1 above the shank?

A

B

C

1

3

2

Federal Circuit and Secondary Factors

• Elevation of “secondary factors” to a de facto “4th Graham factor”

– See, e.g., Hybritech v Monoclonal Antibodies, Inc., p. 736

– “objective evidence must be considered before a conclusion on obviousness”

• P. 739

Updating Graham I

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, 1124-25, (Fed.Cir.2000)

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, 7 USPQ2d 1673, 1681 (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 . . .

Updating Graham II

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)

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 non-human 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 fibrinogen from said milk.

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

"absolute predictability" and “obvious to try” are both incorrect standards. In re O'Farrell, 853 F.2d 894, 903 (Fed.Cir.1988). 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.