| Diamond v. Diehr | |
|---|---|
 | |
| Argued October 14, 1980 Decided March 3, 1981 | |
| Full case name | Diamond, Commissioner of Patents and Trademarks v. Diehr, et al. |
| Citations | 450U.S.175 (more) |
| Case history | |
| Prior | Certiorari granted,445 U.S. 926 |
| Holding | |
| A machine controlled by a computer program was patentable. | |
| Court membership | |
| |
| Case opinions | |
| Majority | Rehnquist, joined by Burger, Stewart, White, Powell |
| Dissent | Stevens, joined by Brennan, Marshall, Blackmun |
| Laws applied | |
| 35 U.S.C. § 101 | |
Diamond v. Diehr, 450 U.S. 175 (1981), was aUnited States Supreme Court decision which held that controlling the execution of a physical process, by running a computer program did not precludepatentability of the invention as a whole.[1][2] The high court reiterated its earlier holdings that mathematical formulas in the abstract could not be patented, but it held that the mere presence of a software element did not make an otherwise patent-eligible machine or process patent ineligible.Diehr was the third member of a trilogy of Supreme Court decisions on thepatent-eligibility of computer software related inventions.[3]
Thepatent application in question US05/602,463[4] was filed on behalf of inventors Diehr and Lutton in 1975. The application claimed a "[process] for molding raw, uncuredsynthetic rubber into cured precision products." The process of curing synthetic rubber depends on a number of factors including time, temperature and thickness of the mold. Using theArrhenius equation
which may be restated asln(v) =CZ +x
it is possible to calculate when to open the press and to remove the cured, molded rubber. The problem was that there was, at the time the invention was made, no disclosed way to obtain an accurate measure of the temperature without opening the press. In the traditional method the temperature of the mold press, which was apparently set at a fixed temperature and was controlled by thermostat, fluctuated due to the opening and closing of the press.
The invention solved this problem by using embedded thermocouples to constantly check the temperature, and then feeding the measured values into a computer. The computer then used the Arrhenius equation to calculate when sufficient energy had been absorbed so that the molding machine should open the press.
Independent claim 1 of the allowed patent is representative. It provides:
1. A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:
providing said computer with a data base for said press including at least, natural logarithm conversion data (ln), the activation energy constant (C) unique to each batch of said compound being molded, and a constant (x) dependent upon the geometry of the particular mold of the press,initiating an interval timer in said computer upon the closure of the press for monitoring the elapsed time of said closure,constantly determining the temperature (Z) of the mold at a location closely adjacent to the mold cavity in the press during molding,constantly providing the computer with the temperature (Z),repetitively calculating in the computer, at frequent intervals during each cure, the Arrhenius equation for reaction time during the cure, which isln(v)=CZ+xwhere v is the total required cure time,repetitively comparing in the computer at said frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and
Thepatent examiner rejected this invention as unpatentable subject matter under 35 U.S.C. 101.[7] He argued that the steps performed by the computer were unpatentable as a computer program underGottschalk v. Benson.[8] TheBoard of Patent Appeals and Interferences of theUSPTO affirmed the rejection. TheCourt of Customs and Patent Appeals (CCPA), the predecessor to the currentCourt of Appeals for the Federal Circuit, reversed, noting that an otherwise patentable invention did not become unpatentable simply because a computer was involved.
The U.S. Supreme Court granted the petition forcertiorari by the Commissioner of Patents and Trademarks to resolve this question.
Source:[9]
The Court repeated its earlier holding that mathematical formulas in the abstract are not eligible for patent protection. But it also held that a physical machine or process which makes use of a mathematicalalgorithm is different from an invention which claims the algorithm, as such, in the abstract. Thus, if the invention as a whole meets the requirements of patentability—that is, it involves "transforming or reducing an article to a different state or thing"—it is patent-eligible, even if it includes a software component.
The CCPA's reversal of the patent rejection was affirmed. But the Court carefully avoided overrulingBenson orFlook. It did criticize the analytic methodology ofFlook, however, by challenging its use ofanalytic dissection, which theFlook Court based onNeilson v. Harford. TheDiehr Court cited the Senate Report and the CCPA Decision in In re Bergy, 596 F.2d 952, 961 (CCPA 1979) to hold that (a) claims must be considered "as a whole," just as they are for all other patentability determinations, without extracting a "gist" or "point of novelty" to be considered in isolation, and (b) section 101 governsthe kind of subject matter that can be patented, while concerns for novelty and non-obviousness are considered separately under sections 102 and 103:[10][11]
The patent that issued after the decision was U.S. Patent 4,344,142, "Direct digital control of rubber molding presses."[6] The patent includes 11 method claims, three of which are independent. All method claims relate to molding of physical articles. The only diagrams in the patent are flowcharts. There are no diagrams of machinery. As the dissenting opinion inDiehr noted, the patent specification "teaches nothing about the chemistry of the synthetic rubber-curing process, nothing about the raw materials to be used in curing synthetic rubber, nothing about the equipment to be used in the process, and nothing about the significance or effect of any process variable such as temperature, curing time, particular compositions of material, or mold configurations."[12]
For many years, it was believed thatDiehr effectively overruledFlook, despite the majority opinion's avoiding any such statement.[13]
In 2012, inMayo v. Prometheus,[14] the unanimous opinion of the Supreme Court interpretedDiehr so as to harmonize it withFlook. The Court "found the overall process patent eligible because of the way the additional steps of the process [besides the equation] integrated the equation into the process as a whole."[15] The Court "nowhere suggested that all these steps, or at least the combination of those steps, were in context obvious, already in use, or purely conventional."[16] "These other steps apparently added to the formula something that in terms of patent law’s objectives had significance—they transformed the process into an inventive application of the formula."[16]
The Court interpretedDiehr slightly differently inAlice v. CLS Bank, another unanimous opinion, but without taking issue with theMayo interpretation. TheAlice Court said:
InDiehr, by contrast [withFlook], we held that a computer-implemented process for curing rubber was patent eligible, but not because it involved a computer. The claim employed a "well-known" mathematical equation, but it used that equation in a process designed to solve a technological problem in "conventional industry practice." The invention inDiehr used a "thermocouple" to record constant temperature measurements inside the rubber mold — something "the industry ha[d] not been able to obtain." The temperature measurements were then fed into a computer, which repeatedly recalculated the remaining cure time by using the mathematical equation. These additional steps, we recently explained, "transformed the process into an inventive application of the formula."Mayo,supra, at ___, 132 S.Ct., at 1299. In other words, the claims inDiehr were patent eligible because they improved an existing technological process, not because they were implemented on a computer.[17]
These two opinions state the current Supreme Court interpretation of what theDiehr case holds.
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