Since the Supreme Court has apparently decided not to release the recording of the oral argument of Bilski v. Kappos until the end of the term, I thought it might be of interest to revisit another important case from the Supreme Court’s history. In Graham v. John Deere, the Supreme Court addressed the issue of non-obviousness under 35 U.S.C. section 103. On the same day that the Supreme Court heard oral argument in Graham v. John Deere, it also heard the oral argument for two companion cases, Calmar v. Cook and Colgate-Palmolive v. Cook.
The Calmar v. Cook and Colgate-Palmolive v. Cook cases concerned a patent on a cap for a chemical sprayer that prevented leakage of chemicals from the container during shipment. The attorney for the patentee argued that the patent was non-obvious and asserted 18 guideposts to help determine whether an invention was obvious:
1) A long-felt need for the invention;
2) An identified baffling problem;
3) Skilled and experienced competitors trying to solve the problem, rather than nobody trying to solve the problem;
4) Begging for an answer — pleas by customers to inventive company to solve the problem;
5) Struggles that the parties had in attempting to come up with an answer;
6) Failures of others in trying to solve the problem;
7) Was the problem truly solved by the inventor of the patent;
8 ) Consider the results of the solution (old result vs. new result) (application to new products)
9) Manner of arriving at the solution;
10) The Patent Office did issue a patent;
11) A new combination of old elements;
12) All the pertinent art was considered;
13) Utility of the invention — simple solution;
14) Acceptance of the invention by competitors and the public;
15) Recognition;
16) Copying by others;
17) Competitor sought the same protection at the Patent Office;
18) Successes by patentee and infringer with the invention.
The following exchange between counsel for the patentee and Justice Black is one of the more interesting discussions from the oral argument where both parties agree that obviousness is a standard that escapes definition: [Listen].
You can listen to the entire oral argument here: [Listen].