Nonobviousness Patent Law Prof. Merges –

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

Securing Tab Robertson ‘604 Patent

Securing Tab, with fold Robertson ‘604 Patent

Securing Tab Robertson ‘604 Patent

Securing Tab Robertson ‘604 Patent

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

“[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 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.

Figure 2 I Beam (Plow Frame) Plow Shank Plow Chisel Clamp Clamping Screw Threaded Hole

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 ( )

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

Graham v. John Deere Is it obvious to move the hinge plate from position A under the shank to position B above the shank? A B

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 Magnesium Elec Trode Cupruous Chloride Niaudet Wood Wensk y X X X

Adams Claim Chart Continuous Current Magnesium Elec Trode Cupruous Chloride Unexpect- Ed Perf. Niaudet Wood Wensk y X X X ADAMS 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 4 th 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 “4 th 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 4 th 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, , (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 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 ….

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 (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, , (Fed.Cir.2000)

Federal Circuit: Post-Graham 1.Elevation of “secondary” factors to 4 th 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”