Graham v John Deere

1
Graham v John Deere

• 3.15.04
• Patent Law

2
Justice Tom Clark (1899-1977)
3
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.

4
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.

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Graham points

• The 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

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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

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Secondary consdiderations

• Might be utilized . . .
• Commercial success
• Long felt need
• Failure of other

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Graham v. John Deere
Prior Art 811 Patent
Upper Plate
Shank
Hinge Plate
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Graham v. John Deere
Claimed Invention 798 (Modified 811 Patent)
Upper Plate
Shank
Hinge Plate
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Graham v. John Deere
Is it obvious to move the hinge plate from
position A under the shank to position 1 above
the shank?
C
3
2
B
1
A
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(No Transcript)
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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

13
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)

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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 . . .
15
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)
16
Updating Graham III

• Velander v. Garner, 348 F.3d 1359 (Fed. Cir.
  2003)

How is reasonable expectation of success
applied?
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• A method for producing biocompetent fibrinogen
  comprising
• providing a transgenic female non-human mammal
  carrying in its germline heterologous DNA
  segments Aa, Bß, and ? 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.

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• 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)

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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.