Amicus Curiae Brief — Graham v. John Deere Co. of Kansas City

Oftice-Supreme Co

FILED

MAR 4 1965

JOHN F. DAVIS, C

IN THE

Supreme Court of the United States

Ocroser Term, 1964,

No. #56, l 1

WILLIAM T. GRAHAM, ann GRAHAM PLOW, INC.,

Petitioners,

vs,

JOHN DEERE COMPANY OF KANSAS CITY, ayp

DEERE & COMPANY,

Respondents,

BRIEF, AMICUS CURIAE.

Iturnots State Bar Association,

Grorce E. Frost,

135 So. LaSalle Street,

Chicago, Illinois,

James M. Werzet,

38 South Dearborn Street,

Chicago, Illinois,

Chicago, Hlinois,

March 4, 1965.

we WARREN PRINTING CONE ', CMICAGO

PAGE

I MN id hh ts ruiclalak Sad ee inn Warne vow On 1

Interest of the Illinois State Bar Association........ 1

Moin ca olde pep asaces ees Bb Pld a Tat AO ge 3

I. Development of the Law of Unobviousness 3

II. 35 U.S. C. 103 and Its Purpose............ 4

III. Constitutional and Statutory Provisions

I Gln e Gakdn SOeRY Chics kdasnennd da 5

IV. The Eighth Circuit Opinion Below........ 6

V. The Fifth Circuit Opinions on Section 103.. 7

VI. Section 103 Is Constitutional.............. 7

VII. Section 103 Is in Furtherance of the Public

Interest and Must Be Given Its Full Effect 9

ET Me Wiese Wad nanishcsnaneehs keene KEL LES 11

i os RES esd akanee cd $3 vena eke 13

ii

CrraTions.

Cases:

Bank v. Sherman, 101 U. S. 403, 406............ 5

Hotchkiss v. Greenwood, 52 U. S. (11 Howard)

TCS So dg sds Wacko b skied Salvi hee kes 3, 5,9

Sinclair Refining Co. v. Atkinson, 370 U.S. 195,203 5

Statutes:

Ne es eagle Vebin ee wee 8

aa tee bie sake edees aeesd Canes 8

ci kt dedveat do? nee enuneeuadse 8

ee re Eo 0 SRS UDINE BE 8

CR is ed wees eo ve av 2, 3, 4, 5, 6, 7, 8, 9, 10

Miscellaneous :

Constitution, Article I, Section 8, Clause 8...... 5, 6,7

House Report No. 1923, May 12, 1952, Page 8....

IN THE

Supreme Court of the United States

Octoser TERM, 1964.

No. 580.

WILLIAM T. GRAHAM, anno GRAHAM PLOW, INC.,

Petitioners,

vs.

JOHN DEERE COMPANY OF KANSAS CITY, anb

DEERE & COMPANY,

Respondents.

BRIEF, AMICUS CURIAE, FOR THE ILLINOIS STATE

BAR ASSOCIATION.

AUTHORITY TO FILE.

This brief, Amicus Curiae, is presented to the Court

under Rule 42-2. The letters of consent from the Peti-

tioners and the Respondents are on file with the Clerk of

the Court. Copies are attached hereto as Appendix A and

Appendix B, respectively.

INTEREST OF THE ILLINOIS STATE BAR ASSOCIATION.

The Illinois State Bar Association is an association of

members of the bar of the State of Illinois. We are con-

cerned with the application of the law in the public interest.

We believe that an expression of our views on Title 35,

Section 103, United States Code, will aid this Court in

determining the important issues raised by the present case.

2

We are specifically moved to file this brief because this is

the first case before this Court on Title 35, Section 103 and,

further, because we believe that the opinion of the Court

of Appeals for the Eighth Circuit below errs in its de-

parture from this statute. We have no concern with, and

express no views on, the private interests of any party to

this litigation.

ARGUMENT.

I. DEVELOPMENT OF THE LAW OF UNOBVIOUSNESS.

The first patent law was enacted in 1790. With the ex-

ception of Section 2 of the 1793 Patent Act, repealed in

1836, no patent act prior to 1952 set forth a quantitative

standard of how the subject matter of a patent must differ

from the prior art. A rule based on the ‘‘skill of the art’’

standard was, however, evolved by judicial decision.

The leading case is this Court’s decision in Hotchkiss v.

Greenwood, 52 U. S. (11 How.) 248 (1850). This Court

there affirmed the judgment of the trial court. The trial

court charged the jury that if

‘‘no more ingenuity or skill (was) required to con-

struct the knob in this way than that possessed by an

ordinary mechanic acquainted with the business, the

patent was invalid.’’ (Page 265.)

In a dissenting opinion, Mr. Justice Woodbury expressed

the view that the instruction should have followed a less

stringent test of ‘‘cheaper and better’’. (52 U. S. (11

How.) at p. 267.)

The ‘‘skill in the art’’ test enunciated in Hotchkiss v.

Greenwood has been followed, in the main, by this Court

and the lower Federal Courts. In the years immediately

preceding 1952, some language used in opinions of this

Court led some to believe that the ‘‘skill of the art’’ test

had been displaced by an even more stringent standard.

Section 103 was enacted in 1952 to resolve these uncer-

tainties.

4

II. 35 USC 103 AND ITS PURPOSE.

Section 103, Title 35, United States Code, reads as

follows:

‘‘Conditions for patentability; non-obvious subject

matter

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.’’ (Emphasis added.)

This section of the statute codified the law. It was in-

tended to lend a ‘‘stabilizing effect’’ on the determination

of patentability. See House Report No. 1923, May 12, 1952,

page 8. The committee report further states:

‘*Section 103, for the first time in our statute, provides

a condition which exists in the law and has existed for

more than 100 years, but only by reason of decisions

of the courts. An invention which has been made, and

which is new in the sense that the same thing has not

been made before, may still not be patentable if the

difference between the new thing and what was known

before is not considered sufficiently great to warrant a

patent .. . Section 103 states this requirement in the

title.

‘“‘That provision paraphrases language which has

often been used in decisions of the courts, and the

section is added to the statute tor uniformity and

definiteness . . .’’ (Id.)

Thus, according to the standard as restated in Section 103,

a patent can be awarded only for that which would not

have been obvious to a person having ordinary skill in the

5

art at the time the invention was made. This language is

similar to that endorsed by a majority of this Court in

Hotchkiss v. Greenwood.

Section 103 equally rejects a standard such as ‘‘better

and cheaper’’. It thus rejects the standard followed in

Mr. Justice Woodbury’s dissent in Hotchkiss v. Greenwood.

Section 103 is a statutory expression of the ‘‘skill of the

art’? test. It should be applied according to the plain

import of its words. Bank v. Sherman, 101 U.S. 403, 406;

Sinclair Refining Co. v. Atkinson, 370 U. S. 195, 208.

III. CONSTITUTIONAL AND STATUTORY PROVISIONS IN-

VOLVED.

Constitution.

Article I, § 8, Clause 8.

The Congress shall have the power * * * to promote

the Progress of Science and useful Arts, by securing

for limited Times to Authors and Inventors the ex-

clusive Right to their respective Writings and Dis-

coveriss; * * *

Statutes.

Title 35 U.S. C.

§ 103. Conditions for patentability; nonobvious sub-

ject matter.

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.

6

IV. TRE EIGHTH CIRCUIT OPINION BELOW.

The court below in the present case noted that the ‘‘trial

court couched its Finding XV rather precisely in the statu-

tory standard of invention found in 35 U. S. C. § 103’.

R. 923, 333 F. (2d) 529, 534. The court continued, how-

ever, to state:

‘But, other findings of the court lay stress on ‘an im-

proved functional result,’ and nowhere does the court

find any new or significantly different result. * * *”’

Moreover, the court stated:

‘In conclusion, we observe once again that the Con-

stitution, Article I, Section 8, Clause 8, authorizes

Congress to reward inventive genius but not mechanical

skill alone. Cuno Engineering Corporation v. Auto-

matic Devices Corporation, supra, 314 U. S. at 91;

Steffan v. Weber Heating and Sheet Metal Company,

supra, 237 F. 2d at 604...’ R. 924, 333 F. (2d) 529,

535.

We submit that here the court below has erred.

Congress has defined the required change over the prior

art in Section 103. It is to that statute, and to that statute

alone, that the court below should have addressed itself.

The test of the statute is whether the subject matter as a

whole would have been obvious to one skilled in the art

—not whether there is a ‘‘new or significantly different re-

sult’’ or whether there is ‘‘inventive genius’’.

The trial court recognized this, addressed itself to the

statute, and found as an ultimate fact thai the statutory

standard of invention of Section 103 had been met. If the

trial court was clearly erroneous in this fact finding, the

court below certainly should have reversed. But in the

absence of determination that such fact finding was clearly

erroneous, the court below was bound to affirm. In no event,

we submit, should the Eighth Circuit Court of Appeals have

7

engrafted on Section 103 a fact requirement of ‘‘new or

significantly different result’’, ‘‘inventive genius’’, or any-

thing else that the statute nowhere contains.

V. THE FIFTH CIRCUIT OPINIONS ON SECTION 103.

We note that the court below reads decisions of the Court

ot Appeals for the Fifth Circuit as requiring only that a

patented combination of old elements produce ‘‘an old re-

sult in a cheaper and otherwise more advantageous way’’.

R. 922, 333 F. (2d) 529, 533. We make no comment on

whether this is a correct or incorrect reading of that Court’s

decisions. However, we do point out that in reaching an

ultimate fact finding on unobviousness a court can and

should consider various basic facts that go to the determina-

tion of the ultimate fact expressed in the statute. Among

these basic facts are whether the result achieved is old or

new, whether the result is achieved in a cheaper or other-

wise more advantageous way, and the like. But if the

Court of Appeals for the Fifth Circuit really has substituted

an ultimate standard of ‘‘cheaper and otherwise more ad-

vantageous way’’ for the ultimate fact of unobviousness

as expressed in Section 103, we believe that it too has erred.

VI. SECTION 103 IS CONSTITUTIONAL.

Section 103 was enacted pursuant to Article I, Section 8,

clause 8 of the Constitution. This gives the Congress

power:

‘*. . . to promote the progress of science and useful

arts, by securing for limited times to authors and in-

ventors the exclusive right to their respective writings

and discoveries.”’

This provision assigns to Congress a broad responsibility

to determine the subject matter, the conditions, and the

term for which it will grant patents. Since 1790 the

8

Congress has exercised this power through the enactment

of general patent statutes that specifically define patentable

subject matter, the patent term, what is ‘‘prior art’’ and

other conditions and terms of the patent grant.

For example, in Section 1 of the 1790 Patent Act Congress

defined patentable subject matter as ‘‘any useful art,

manufacture, engine, machine, or device, or any improve-

ment therein.’’ (1 Stat. 102.) Today, Section 101 of the

1952 Patent Code defines patentable subject matter to in-

clude ‘‘any new and useful process, machine, manufacture,

or composition of matter, or any new and useful improve-

ment thereof ...’’

Similarly Section 1 of the 1790 Patent Act, required that

the ‘‘useful art, manufacture”’ etc. be ‘‘not before known

or used.’’ (1 Stat. 102.) Today, Section 192 of the 1952

Patent Code sets forth related requirements that the in.

vention not be ‘‘known or used by others’’ or ‘‘patented

or described in a printed publication’’ and the like.

Not only this, there is a specific statutory precedent for

Section 103 of the 1952 Patent Code. This is found in the

1793 ‘‘Act to promote the progress of useful Arts.’’ (1

Stat. 318.) The terminal sentence of Section 2 of that

Act reads:

‘*And it is hereby enacted and declared, that simply

changing the form or the proportions of any machine,

or composition of matter, in any degree, shall not be

deemed a discovery.’’ (1 Stat. 318.)

The provisions of Section 103 of the 1952 Patent Code

reflect the determination of the Congress of what may be

patented, how it may be patented, and the term of the patent

when granted. As to all of these many aspects of the law,

the Congress has made a legislative determination that the

Constitutional power permits, that public policy requires,

and that the public interest is protected and promoted by,

the patent law as expressed in the statute.

9

There is no valid reason to interfere with the legislative

determination of Congress expressed in Section 103. In-

deed, it expresses in statutory language substantially the

same ‘‘skill in the art’’ test that this Court itself enunciated

in Hotchkiss v. Greenwood, 52 U.S. (11 Howard) 248 (185).

It also follows the precedent of the 1793 Patent Act which in

part defined a wholly comparable standard.

VII. SECTION 103 IS IN FURTHERANCE OF THE PUBLIC

INTEREST AND MUST BE GIVEN ITS FULL EFFECT.

The standard of patentability set forth in Section 103

is stringent. No common change over the prior art can

measure up as ‘‘unobvious.’’ Patentability is reserved fox

the exceptional cases. This is as it should be. The public

interest is safeguarded.

At the same time, the standard is not impossible to meet.

Again, this is as it should be. Unless business enterprise

and inventors are advised in advance that they face an

attainable (though strict) standard, the patent law stimulus

to invent and to market becomes theory and not reality.

Section 103 serves an additional important function. It

defines a fact standard for the courts and the Patent Office

to apply. Attainment of the Constitutional objective of

progress of the useful acts is clearly aided by this carefully

framed legislatively expressed standard.

10

Insofar as the court below relied upon standards other

than that expressed in Section 103, we submit that the court

erred.

Respectfully submitted,

Tiuinots Strate Bar Association,

Gerorce KE. Frost,

135 So. LaSalle Street,

Chicago, Illinois,

James M. WETzEL,

38 South Dearborn Street,

Chicago, Illinois,

lis Attorneys.

Chicago, Illinois,

March 2, 1965.

11

APPENDIX A.

(Letterhead of Claude A. Fishburn and Orville O. Gold,

Kansas City, Mo. 64106.)

Febbruary 16, 1965

Mr. George Frost

135 So. La Salle Street

Chicago, Illinois

In re: No. 580 in the Supreme Court of the United

States; William T. Graham and Graham Plow,

Inc., Petitioners, vs. John Deere Company of

Kansas City and Deere & Company, Respond-

~ents:~

Dear Mr. Frost:

In behalf of the petitioners in the above cause, we hereby

consent to your filing an amicus curiae brief in behalf of

the Section on Patent, Trademark and nr Law of the

Illinois State Bar Association.

Yours very truly,

Fishburn and Gold,

By: Claude A. Fishburn.

CAF :fj

ec: Mr. Tom Arnold, Chairman

Patent, Trademark and Copyright Section

American Bar Association

2220 Tennessee Building

Houston, Texas 77002

12

: Mr. S. Tom Morris

630 Amarillo Building

Amarillo, Texas 79101

ec: Mr. James M. Wetzel

Hume, Groen, Clement & Hume

38 So. Dearborn Street

Chicago, Illinois 60603

APPENDIX B.

(Letterhead of Gibson, Ochsner, Harlan, Kinney & Morris,

Amarillo, Texas 79101.)

February 18, 1965

Air Mail

Mr. George E. Frost, Chairman,

Section on Patents, Trademarks

and Copyright Law

Illinois State Bar Association

135 South LaSalle Street

Chicago, Illinois

_ In re: No. 580 in the Supreme Court of the United

States; William T. Graham and Graham Plow,

Inc., Petitioners, vs. John Deere Company of

Kansas City and Deere & Company, Respond-

ents

Dear Mr. Frost:

We acknowledge Mr. Wetzel’s letter of February 16,

1965, and in behalf of the Respondents in the above cause

I hereby consent to your filing an amicus curiae brief in

behalf of the Section on Patents, Trademarks and Copy-

right Law of the Illinois State Bar Association.

Yours very truly,

Gibson, Ochsner, Harlan, Kinney &

Morris,

By S. Tom Morris. -”

14

cc: Mr. James M. Wetzel

Hume, Groen, Clement & Hume

38 So. Dearborn Street

Chicago, Illinois 60603

Fishburn and Gold

Attorneys at Law

1217 Commerce Trust Building

Kansas City, Missouri 64106

Mr. Thomas E. Scofieid

Scofield, Kokjer, Scofield & Lowe

1325 Rialto Building

Kansas City 6, Missouri