NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

DEERE & COMPANY,

Appellant

v.

RICHARD GRAMM,

Appellee

______________________

2020-1488, 2020-1491

______________________

Appeals from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in Nos. IPR2015-

00898, IPR2015-00899.

______________________

Decided: February 4, 2021

______________________

JEFFRY M. NICHOLS, Brinks Gilson & Lione, Chicago, 

IL, for appellant. Also represented by JAFON FEARSON,

JOSHUA JAMES, LAURA A. LYDIGSEN.

 JOHN COTTER, Larkin Hoffman Daly & Lindgren, Ltd., 

Minneapolis, MN, for appellee. Also represented by 

THOMAS JOHN OPPOLD.

 ______________________

Before LOURIE, DYK, and MOORE, Circuit Judges.

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2 DEERE & COMPANY v. GRAMM

LOURIE, Circuit Judge.

Over a half century ago, the Supreme Court decided a 

patent case between one Graham and John Deere, Graham v. John Deere Co., 383 U.S. 1 (1966), which established the factual inquiries that underly the legal question 

of obviousness under 35 U.S.C. § 103. We now have an obviousness case between John Deere and another Gramm. 

John Deere is not so fortunate in the result this time. 

 In this case, Deere & Company (“Deere”) appeals from 

two final written decisions of the Patent Trial and Appeal 

Board (“Board”) holding that claims 12–26 of U.S. Patent 

6,202,395 (the “’395 patent”) are not unpatentable as obvious. See Deere & Co. v. Gramm, No. IPR2015-00898, 2019 

WL 7000106 (P.T.A.B Dec. 20, 2019); Deere & Co. v. 

Gramm, No. IPR2015-00899, 2019 WL 7000102 (P.T.A.B 

Dec. 20, 2019).1 Because the Board did not commit legal 

error and substantial evidence supports the Board’s factual 

findings, we affirm. 

BACKGROUND

Richard Gramm owns the ’395 patent directed to an 

“apparatus for detecting and controlling the height above 

the soil of an agricultural machine as it traverses a field.” 

See ’395 patent col. 1 ll. 10–13. The ’395 patent explains 

that it can be important to maintain the header of a combine crop harvester “above the soil [at] a predetermined, 

fixed height.” Id. col. 1 ll. 17–20. Maintaining a height 

above the soil is necessary to “avoid damage to the head 

caused by impact with the soil or other obstruction such as 

a rock” and to avoid “ingestion of non-crop debris which reduces harvesting efficiency and may also cause damage to 

1 The Board’s reasoning relevant to this appeal in 

both final written decisions was identical. In this opinion, 

we will cite the final written decision in IPR 2015-00898 

and refer to it as “Decision.”

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DEERE & COMPANY v. GRAMM 3

the combine.” Id. col. 1 ll. 22–27. However, the header 

“must also not be raised too high to avoid missing down 

plants which do not extend upwardly a sufficient distance.” 

Id. col. 1 ll. 28–30.

Relevant to this appeal, the patented apparatus contains a flexible sensor arm that engages the soil and is 

dragged across the ground as the combine crop harvester 

travels in the forward direction. See id. col. 2 ll. 22–33, 

col. 3 ll. 24–42, col. 6 l. 9–col. 7 l. 16. Attached to the sensor 

arm is a “ball 102 in the shape of an ellipsoid which engages 

the soil as the combine traverses a field.” Id. col. 6 

ll. 17–19. The sensor arm includes “coiled spring 114,” 

which “urges sensor arm 96 in a counterclockwise direction 

of rotation about the motion sensor” and “thus maintains 

the sensor arm 96 at an inclined angle, with the ball 102 

trailing the bracket 26 as the ball engages the soil as the 

combine traverses the field.” Id. col. 6 ll. 36–42. Figures 7 

and 8 illustrate an embodiment of the sensor arm:

’395 patent Figs. 7 and 8 (annotation added). 

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4 DEERE & COMPANY v. GRAMM

Claim 12 is the only independent claim at issue in this 

appeal:

12. Apparatus for maintaining a non-cut crop 

header in a crop harvester a designated height 

above the soil as the crop harvester traverses a 

field, said apparatus comprising:

a generally linear arm coupled to the header and 

having first and second opposed ends, 

wherein the first end of said arm engages and 

is displaced over the soil as the header moves 

above the soil;

angular deflection sensing means coupled to the 

second end of said arm for measuring a deflection of said arm when the first end of said 

arm encounters irregularities in the soil as 

the header moves above the soil and for 

providing a first signal representing the extent of deflection of said arm;

biasing means for urging said arm to a selected inclined orientation relative to 

vertical, wherein said arm in said selected inclined orientation extends below and aft of said angular deflection 

sensing means as the crop harvester 

moves in a forward direction, said biasing 

means allowing for forward displacement of 

the first end of said arm beyond vertical 

when the crop harvester is moved rearwardly 

while the first end of said arm engages the 

soil without damaging said arm, with said biasing means again urging said aim to said selected inclined orientation when the crop 

harvester is again moved in the forward direction or when the second end of said arm is 

removed from contact with the soil; and

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DEERE & COMPANY v. GRAMM 5

control means coupled to said header and said 

angular deflection sensing means and responsive to said first signal for raising or lowering the header in accordance with said first 

signal in maintaining the header a designated height above the soil, wherein said 

flexible arm and angular deflection sensing 

means are attached to a head housing disposed on a forward portion of said combine 

and said head housing is comprised of polyurethane and includes a metal tip and a 

mounting bracket for attaching said metal 

tip to a forward end of said head housing, and 

wherein said mounting bracket further couples said flexible arm to a forward end of said 

head housing.

Id. at col. 8 ll. 22–61 (emphasis added). 

Deere filed two petitions for inter partes review (IPR) 

of all claims of the ’395 patent. On September 23, 2015, the 

Board instituted review of claims 1–11 and 27–34, but not 

claims 12–26. On September 22, 2016, the Board issued a 

final written decision in each IPR holding claims 1–11 and 

27–34 unpatentable as obvious. Deere & Co. v. Gramm, No. 

IPR2015-00898, 2016 WL 11503073 (P.T.A.B. Sept. 22, 

2016); Deere & Co. v. Gramm, No. IPR2015-00899, 2016 

WL 11503074 (P.T.A.B. Sept. 22, 2016). We affirmed the 

Board’s final written decisions. Gramm v. Deere & Co., 711 

F. App’x 650 (Fed. Cir. 2018). However, in view of the Supreme Court’s decision in SAS Ins., Inc. v. Iancu, 138 S. Ct. 

1348 (2018), the Supreme Court vacated our affirmance 

and remanded the case for further consideration. Gramm 

v. Deere & Co., 139 S. Ct. 244 (2018). We then recalled the 

mandate, again affirmed the Board’s holding regarding 

claims 1–11 and 27–34, and remanded to the Board for further proceedings regarding claims 12–26.

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6 DEERE & COMPANY v. GRAMM

On December 20, 2019, the Board issued a final written 

decision in each IPR holding that claims 12–26 of the 

’395 patent were not proven unpatentable as obvious. 

Deere appealed, and we have jurisdiction under 28 U.S.C. 

§ 1295(a)(4)(A).

DISCUSSION

We review the Board’s legal determinations de novo, In 

re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), but we review the Board’s factual findings underlying those determinations for substantial evidence, In re Gartside, 203 F.3d 

1305, 1316 (Fed. Cir. 2000). A finding is supported by substantial evidence if a reasonable mind might accept the evidence as adequate to support the finding. Consol. Edison 

Co. v. NLRB, 305 U.S. 197, 229 (1938). “If two ‘inconsistent 

conclusions may reasonably be drawn from the evidence in 

record, the PTAB’s decision to favor one conclusion over the 

other is the epitome of a decision that must be sustained 

upon review for substantial evidence.’” Elbit Sys. of Am., 

LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1356 (Fed. Cir. 

2018) (quoting In re Cree, Inc., 818 F.3d 694, 701 (Fed. Cir. 

2016) (internal brackets omitted)).

This appeal centers on the “biasing means” limitation 

in claim 12, and it is helpful to begin by establishing the 

several issues on which the parties agree. The parties 

agree that, in construing the biasing means limitation, the 

Board correctly determined that it is a means-plus-function element that invokes 35 U.S.C. § 112(f). The parties 

further agree that the Board correctly identified the three 

functions of the biasing means as enumerated in the claim, 

the first of which is:

urging said arm to a selected inclined orientation 

relative to vertical, wherein said arm in said selected inclined orientation extends below and aft of 

said angular deflection sensing means as the crop 

harvester moves in a forward direction . . . .

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DEERE & COMPANY v. GRAMM 7

’395 patent col. 8 ll. 35–39. And the parties agree that the 

corresponding structure to achieve the functions of the biasing means is the “coiled spring” denoted as component 114 in the figures “and equivalents thereof.” Decision, 

2019 WL 7000106, at *5–7. It is thus undisputed that in 

order to teach the biasing means limitation, a prior art reference must teach that a coiled spring or an equivalent 

thereof performs the function of urging the arm to a selected inclined orientation relative to vertical. 

The parties’ dispute concerns the Board’s application of 

its claim construction in comparing the claim to the prior 

art, specifically the Cleveland reference.2 Deere contends 

that the Board committed legal error by deviating from its 

claim construction for the biasing means limitation. Deere 

insists that the Board improperly narrowed the claim to 

exclude a scenario in which the biasing means urges the 

arm to the selected inclined orientation through contact 

with the ground. Deere argues that this claim construction 

error led to the erroneous finding that Cleveland’s spring 

does not perform the first function of the biasing means. 

Gramm responds that Deere has not actually raised a 

claim construction issue but rather a challenge to the 

Board’s factual findings about the content of Cleveland’s 

teachings. Gramm further argues that the Board’s findings regarding Cleveland are supported by substantial evidence. For the reasons that follow, we agree with Gramm. 

First and foremost, we reject Deere’s attempt to obtain 

de novo review of a factual finding by reframing it as 

though it presents a claim construction issue. It is wellestablished that “[o]ur validity analysis is a two-step procedure.” TI Grp. Auto. Sys. (N. Am.), Inc. v. VDO N. Am., 

L.L.C., 375 F.3d 1126, 1139 (Fed. Cir. 2004). “The first step 

involves the proper interpretation of the claims. The 

2 U.S. Patent 3,611,286.

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8 DEERE & COMPANY v. GRAMM

second step involves determining whether the limitations 

of the claims as properly interpreted are met by the prior 

art.” Id. (quoting Beachcombers, Int’l, Inc. v. WildeWood 

Creative Prods., Inc., 31 F.3d 1154, 1160 (Fed. Cir. 1994)). 

The first step of interpreting the claims is a question of law, 

but the second step of determining whether the alleged 

prior art met the claim limitations is a question of fact. 

Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1574 (Fed. 

Cir. 1995); see also Graham, 383 U.S. at 17–18 (establishing the “basic factual inquiries” underlying obviousness, including “the scope and content of the prior art” and the 

“differences between the prior art and the claims at issue”).

Here, after construing the biasing means limitation, 

the Board determined that Cleveland did not teach the first 

function of the biasing means. That is a factual finding 

subject to appellate review for substantial evidence. In re 

Cuozzo Speed Techs., LLC, 793 F.3d 1268, 1280 (Fed. Cir. 

2015) (“What a reference teaches and the differences between the claimed invention and the prior art are questions 

of fact which we review for substantial evidence.”) (citing 

In re Baxter Int’l, Inc., 678 F.3d 1357, 1361 (Fed. Cir.

2012)). Deere attempts to contort the Board’s opinion by 

suggesting that the Board actually misconstrued the claim 

in such a way so as to not read on the teachings of Cleveland. We are not persuaded by that argument, which seeks 

to blur the clear delineation in the law between the two 

steps of the invalidity analysis.3 

Moreover, Deere mischaracterizes the Board’s findings

regarding Cleveland. Deere truncates a quote from the 

Board’s opinion and misleadingly asserts that the Board 

3 Because we agree with Gramm that Deere’s argument is not actually based on claim construction, we decline to consider Gramm’s arguments that waiver and 

judicial estoppel should attach to any such claim construction argument.

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DEERE & COMPANY v. GRAMM 9

found that “Cleveland’s spring urges the arm to the inclined orientation ‘through contact with the ground.’” Appellant Br. 19 (quoting Decision, 2019 WL 7000106, at *15).

Deere then spends significant portions of its brief arguing 

the undisputed and unsurprising point that the functions 

of the biasing means in claim 12 are carried out while the 

arm contacts the ground. But the full quote from the 

Board’s decision reveals the flaw in Deere’s argument:

In Cleveland, it is only through contact with the 

ground that spring 38 is urged into an inclined orientation, not because of any urging function 

performed by spring 38.

Decision, 2019 WL 7000106, at *15 (emphases added). The 

Board found that Cleveland’s helical spring—which also 

functions as part of the “arm” in Cleveland’s apparatus, see 

J.A. 308 col. 2 ll. 59–65—“is urged” into an inclined position

“only” by the ground, and the spring does not itself do any 

“urging.” Thus, contrary to Deere’s assertion that the 

Board merely found that Cleveland’s spring performs the 

first biasing means function in a different way than the 

’395 patent, the Board actually found that Cleveland’s 

spring does not perform that function at all.

We are thus left only with the question whether substantial evidence supports the Board’s finding that Cleveland’s spring does not perform the required function of 

“urging [the] arm into an inclined orientation relative to 

vertical.” To support that finding the Board relied on numerous disclosures from Cleveland regarding the “elongated helical spring 38.” See Decision, 2019 WL 7000106, 

at *14–15. As stated in Cleveland:

Spring 38 is flexible along its longitudinal axis but 

is adapted to maintain its straight configuration in 

absence of bending forces being applied thereto. 

Spring 38 and swing member 20 together form an 

elongated member which is free to swing about the 

axis provided by hinge bolt 30.

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10 DEERE & COMPANY v. GRAMM

J.A. 308 col. 2 ll. 60–65. The Board looked to Cleveland’s 

figures, including Figures 2, 3, 6, and 7, which together 

demonstrate how the helical spring functions as part of 

Cleveland’s apparatus as it moves across a field:

J.A. 307 (annotations added). The Board then relied on 

passages in Cleveland’s written description, all of which 

demonstrate that Cleveland’s spring “urges the arm to a 

vertical orientation, not a selected orientation relative to 

vertical.” Decision, 2019 WL 7000106, at *14–15 (quoting 

Cleveland’s disclosure at J.A. 309–310 col. 3 l. 67–col. 4 

l. 26, col. 5 ll. 5–12). The Board thus found:

In Cleveland, it is only through contact with the 

ground that spring 38 is urged into an inclined orientation, not because of any urging function performed by spring 38. Cleveland makes this clear 

by purposely constructing its device such that “. . . 

helical spring 38 will be deflected in the manner 

shown in Fig. 7.”

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DEERE & COMPANY v. GRAMM 11

Id. (quoting Cleveland’s disclosure at J.A. 309 col. 3 

ll. 67–71). The disclosures in Cleveland that were cited by 

the Board constitute substantial evidence supporting the 

Board’s finding that Deere failed to show that Cleveland’s 

spring performs the first function of the biasing means in 

claim 12 of the ’395 patent.

Finally, we disagree with Deere’s argument that this 

latest round of IPR decisions conflicts with the earlier final 

written decisions regarding claims 1–11 and 27–34. In 

those earlier decisions, the Board found that claim 4, which 

includes a “biasing means for urging said flexible arm 

downward into engagement with the soil,” would have been 

obvious in view of the prior art. See Deere & Co., 2016 WL 

11503073, at *22; ’395 patent col. 7 ll. 65–67. But we agree 

with the Board’s conclusion that:

“urging said flexible arm downward into engagement with the soil” (as recited in claim 4) is not the 

same function as “urging said arm to a selected inclined orientation relative to vertical . . .” (function 

[1] of the biasing means of claim 12).

Decision, 2019 WL 7000106, at *13. The Board has never 

suggested that Cleveland’s spring does anything other 

than urge the flexible arm into engagement with the soil. 

The Board simply found here that Cleveland’s spring does 

so by urging the arm “to a vertical orientation, not a selected orientation relative to vertical.” Id. at *15. As discussed above, that finding is supported by substantial 

evidence.

CONCLUSION

We have considered Deere’s remaining arguments but 

we find them unpersuasive. Accordingly, the Board’s final 

written decisions are affirmed.

AFFIRMED

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