This year marks the 50th anniversary of Graham v. Deere, the landmark U.S. Supreme Court case that set the framework for determining obviousness in patent law. Amarillo attorney Tom Morris represented John Deere Co. and argued before the Supreme Court. For 10 years leading up to Graham v. Deere, Morris had been litigating the Graham patents in Amarillo Federal Court; the 5th Circuit; the Kansas City, Missouri Federal Court; and the 8th Circuit. He devoted many hours to research, knew every nuance of the case, and always arrived in the courtroom prepared. Here, the 96-year-old attorney who loves to study law and stills goes to the office, talks about the case and its impact.
During the Dust Bowl in the Great Plains of the United States, the common method of plowing was with one-way, or tandem disc, plows that turned under the crop residue and left the surface of the land flat and subject to severe wind erosion. Implement manufacturers sought answers, and two in Amarillo—William T. Graham and Jeoffroy Mfg. Inc.—developed chisel plows with spring shanks that broke up the soil and left residue on the surface. This method reduced wind erosion and was quite successful in the lower Great Plains states (Texas, Oklahoma, Colorado, Kansas, and Nebraska) but encountered severe problems in the northern Great Plains where many buried glacial rocks were buried. When the chisels encountered buried rocks, the chisels and shanks would break and plow frames would bend. Graham and Jeoffroy sought to resolve those problems. Graham obtained two patents, a brace device to reduce bending of the plow frames (US Patent No. 2,464,255 ) and a spring-loaded-hinge clamp that would permit the chisel and shank to ride over a rock and return to working position (US Patent No. 2,493,811 ). Jeoffroy developed similar devices, and in 1951, Graham sued Jeoffroy for infringement of both patents in the United States District Court in Amarillo. Jeoffroy brought the case to Gibson, Ochsner and Little, a local law firm, for defense. Chicago patent attorneys were employed. I had just joined Gibson, Ochsner and Little and Mr. Ochsner assigned the case to me to act as local counsel and assist the patent attorneys. At that time, I had less than three years of general trial experience and knew nothing about patents or patent law, but I learned a little bit as the case progressed. It was tried in 1952. Judge Dooley held the brace patent (255) invalid and the spring clamp patent (811) valid and infringed. This was a disappointing loss for the Jeoffroys. They promptly fired the Chicago attorneys and said to me: “Tom, you take over for the appeal.” I should have refused that assignment but did not, and the next 60 days, I worked about 18 hours a day perfecting the appeal, preparing the record, and preparing the briefs. The 5th Circuit affirmed in Graham v. Jeoffroy, 206 F.2d 769 (1953).
Jeoffroy redesigned its spring clamp and Graham obtained another patent, No. 2,627,798 (798), titled “Clamp For Vibrating Shank Plows.” He never manufactured a device as shown and claimed in that patent, but he promptly sued Jeoffroy again under the 811 patent and the 798 patent. I defended. Judge Dooley held that Jeoffroy’s new spring clamp infringed the 811 patent but that the 798 patent was invalid for lack of invention. The 5th Circuit reversed, holding that 811 was not infringed but that 798 was valid and infringed. Cert was denied. I had won some battles but lost the war for Jeoffroy.
Graham also sued Cockshutt Farm Equipment in the Amarillo Federal Court, and I defended Cockshutt. Judge Dooley held that Cockshutt did not infringe and the Fifth Circuit affirmed.
That brings us to Graham v. Deere. Graham sued Deere in the United States District Court for the Western District of Missouri for infringement of 798. I defended. The district court followed the 5th Circuit and held 798 valid and infringed. I appealed to the 8th Circuit and it reversed, holding 798 invalid.
We then had a direct conflict between the 5th Circuit and the 8th Circuit as to the validity of the Graham 798 patent. The time was ripe for a Supreme Court decision. Certiorari was granted in Graham v. Deere and two other cases. All three were set for argument on October 14, 1965.
I knew the law and the art involved better than any other person in the world.”
In 1952, Congress had passed the 1952 Patent Act, which was the first real change in the patent statutes in more than 100 years. There had been only two statutory requirements for the issuance of a patent, i.e., novelty and usefulness, but the courts had long added a third requirement, i.e., that there must be “invention.” There were literally hundreds of cases in the circuit courts and a few cases in the Supreme Court, with varying results. In Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941), Justice William O. Douglas had stated that to constitute invention there must be a “flash of creative genius, not merely the skill of the calling.”
The 1952 Patent Act retained the requirements of novelty and usefulness in sections 101 and 102, but added section 103, providing as follows:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.
The circuit courts had gone in many directions as to what section 103 meant and the Supreme Court had not decided a single case under section 103.
The patent bar of the United States was eagerly awaiting a Supreme Court decision on section 103 and the courtroom was full, with attorneys standing along the walls. It goes without saying that the decision of the Supreme Court was going to be a landmark of extraordinary importance.
Graham v. Deere was the first case for argument and the arguments went my way. Graham’s counsel argued in support of the patent a function that had not been stated or argued in the patent office during the prosecution of the application and was minimized by his patent expert in the trial of the Jeoffroy cases and the Deere case. That function was bending of the forward nine inches of the spring shank away from the hinge plate rather than against the hinge plate. I had hardly commenced my argument when Justice Hugo Black rose up in his chair and in effect said to me, “Mr. Morris, what difference does it make whether the shank bends away from the plate or against the plate?” I responded, “It makes no difference whatsoever,” and Justice Black said, “That’s what I thought.” In view of that remark, I shortened my argument, and the court asked me very few questions. The 798 patent was held invalid as obvious.
The second patent case argued that day involved a plastic finger sprayer with a hold-down lid. The arguments presented no drama, and the Supreme Court held that patent invalid as obvious.
The third case, United States v. Adams, presented great drama. The patent was for a non-rechargeable electric battery, comprising magnesium and cuprous chlorides placed in a container of plain or salt water, which was effective under high pressures, such as in submarines, and under low pressures, such as in high-altitude airplanes. During World War II, the United States had effectively used thousands of such batteries but refused to pay Mr. Adams any royalties, contending that the patent was invalid. Adams sued in the Court of Claims, which held the patent valid and infringed. In the Supreme Court, Adams was represented by John A. Reilly, a distinguished patent attorney with extensive experience before the Supreme Court. He requested and obtained permission to make a demonstration during his argument and set up on the counsel table a battery, with wiring and a light bulb. To begin his argument, he stated to the court that if Adams was correct about validity of his patent, the light would come on before Reilly finished his argument. About 15 minutes into his argument, the light came on. The entire audience burst into applause, and all members of the court stood up to see the light. Needless to say, the court held that Adams’s invention was novel, useful, and non-obvious. No one could explain how it worked, but it did.
This year is the 50th anniversary of Graham v. Deere. It has been cited more than 8,000 times and has been reaffirmed by the Supreme Court in Anderson’s Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969); Sakraids v. Ag Pro, Inc., 425 U.S. 273 (1976), and KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). In KSR, the Federal Circuit (which has handled all patent appeals since 1984) attempted to apply a more rigid test, which it called “teaching, suggestion, and motivation.” The Supreme Court rejected that test as incompatible with its precedents and reaffirmed Graham v. Deere, which is the law today.
If I live another 96 years, I would expect Graham v. Deere to remain the law because it complies with Article I, Section 8, Clause 8 of the United States Constitution, which authorizes Congress “To promote the Progress of…useful Arts, by securing for limited Times to…Inventors the exclusive Right to their…Discoveries,” as explained in Hotchkiss v. Greenwood, 11 How. 248, 13 L.Ed. 683 (1850).
Graham v. Deere was a singular experience. From a beginning with no knowledge of patent law to victory in Graham v. Deere and establishment of law that has lasted for 50 years and promises to last indefinitely, there could be no greater achievement in the law.
Interview by Hannah Kiddo
To hear the oral argument before the U.S. Supreme Court, go to oyez.org/cases/1965/11.