Graham v. John Deere Co.
Graham v. John Deere Co. is the Supreme Court's first full interpretation of 35 U.S.C. § 103, the nonobviousness requirement Congress added in the Patent Act of 1952. The Court held that § 103 codified the long-standing requirement of invention rather than changing it, and it set out the framework every obviousness analysis still follows: determine the scope and content of the prior art, the differences between the prior art and the claims, and the level of ordinary skill, with secondary considerations such as commercial success, long-felt need, and the failure of others as further evidence.
Holding
The Court held that the 1952 Act's § 103 was intended to codify the judicial requirement of "invention" traced to Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1850), with a shift in emphasis to the objective test of nonobviousness, and that it neither raised nor lowered the general level of patentable invention. Applying the framework, the Court held the claims in all three consolidated cases invalid as obvious.
The core passage reads:
Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. 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.
383 U.S. at 17–18. The Court also described the ultimate question of patent validity as one of law, resting on these factual inquiries.
Facts
William Graham held a patent on a spring clamp that allowed the shanks of chisel plows to flex and ride over rocks and other obstructions in the soil without damage. He sued John Deere for infringement. The claimed improvement over Graham's own earlier patented design consisted principally of rearranging the parts, placing the shank below the hinge plate rather than above it. The case reached the Supreme Court amid conflicting appellate decisions on the validity of the same patent.
The two consolidated Cook Chemical cases involved a finger-operated pump sprayer with a hold-down cap used on insecticide containers ("shipper-sprayers"). The Court held both inventions obvious: the differences over the prior art were ones a person of ordinary skill would readily have made.
The Court's reasoning
Constitutional framing. Justice Clark began with the Patent Clause, U.S. Const. art. I, § 8, cl. 8, explaining that it is both a grant of power and a limitation: Congress may not authorize patents whose effect is to remove existing knowledge from the public domain or to restrict free access to materials already available. The patent system rewards additions to the sum of useful knowledge.
Codification, not change. The Court rejected arguments that § 103 lowered the standard of patentability (as some argued Congress intended in reaction to the "flash of creative genius" language of Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84 (1941)). Section 103's last sentence — that patentability shall not be negatived by the manner in which the invention was made — addressed that concern, but the general level of innovation required remained the same.
A factual framework. Rather than a test of "invention," the Court asked what the prior art taught, how the claims differed, and what a person of ordinary skill would have done. That method made obviousness more predictable and, importantly, made room for objective evidence of nonobviousness.
Companion case. On the same day, in United States v. Adams, 383 U.S. 39 (1966), the Court upheld a battery patent, relying in part on the fact that the prior art taught away from the combination and that experts had initially doubted it would work.
The Graham factors today
- Scope and content of the prior art — what was known in the field and reasonably pertinent fields at the relevant time.
- Differences between the prior art and the claims at issue — assessed claim by claim, considering the claimed invention as a whole.
- Level of ordinary skill in the pertinent art — the hypothetical person of ordinary skill whose perspective governs.
- Objective indicia (secondary considerations) — commercial success, long-felt but unsolved need, failure of others, and later-recognized factors such as industry praise, copying, licensing, and unexpected results.
The Federal Circuit treats objective indicia as part of the obviousness analysis that must be considered when presented, not as an afterthought, but requires a nexus between the evidence and the merits of the claimed invention. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983); Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366 (Fed. Cir. 2019) (nexus).
Graham after KSR
In KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court rejected the Federal Circuit's rigid application of the teaching-suggestion-motivation test but expressly reaffirmed Graham: the Graham factors "continue to define the inquiry that controls." KSR changed how courts reason about combining prior art — allowing common sense, design incentives, and predictable variations — not the Graham framework itself.
The Graham factors therefore remain the structure for obviousness in district courts, at the PTAB, and in patent examination. See obviousness under § 103.
Frequently asked questions
What are the Graham factors?
From Graham v. John Deere (1966): the scope and content of the prior art, the differences between the prior art and the claims, the level of ordinary skill in the art, and secondary considerations such as commercial success, long-felt need, and failure of others.
Are the Graham factors still relevant after KSR?
Yes. KSR v. Teleflex (2007) rejected a rigid teaching-suggestion-motivation test but reaffirmed that the Graham factors continue to define the obviousness inquiry.
What was the invention in Graham v. John Deere?
A spring clamp that let chisel-plow shanks flex over rocks in the soil. The Court held it obvious because the claimed change over Graham's earlier design was a rearrangement of known parts a skilled person would have made.
Is obviousness a question of law or fact?
Under Graham, the ultimate question of obviousness is a legal conclusion based on underlying factual findings about the prior art, the differences, the level of skill, and objective indicia.
See also
- Obviousness under § 103The full framework, motivation to combine, and objective indicia.
- KSR v. TeleflexThe 2007 decision that reaffirmed Graham and rejected rigid TSM.
- AnticipationThe single-reference counterpart to obviousness.
- Inter partes reviewWhere most obviousness challenges are now litigated.
Last reviewed: October 2026