Diamond v. Diehr (901422128)

Read for 2/7/11

Reading Notes

• Diehr filed a patent for a process for molding uncured rubber into cured products
  • Constantly measured the temperature inside the press and fed it into a mathematical equation which opened the press at the right time
• Patent examiner rejected it as it was non-statutory matter under 35 USC 101
• USSC determined the subject matter was eligible for patent for the following reasons
  • The process involved was of the type historically subject to patent
  • Did not seek patent for a formula, but for a process - cannot be unpatentable just because it uses a formula or a computer
  • If a claim using a formula applies it to a process performing a function that the laws were designed to protect, it satisfies 101
• It is possible to use the well-known Arrhenius equation to determine when to open the press and remove the cured product
  • However, the industry was previously unable to measure temperature successfully
  • Diehr's addition to the process is to constantly measure the temperature inside
• Claim novelty in constantly measuring, feeding information into the computer, and constantly recalculating the cure time
  • Examiner said the subject matter was nonstatutory under 101, citing Gottschalk
    • Said they claimed protection for a computer program to control the press
• PTO Board of Appeals agreed
  • Court of Customs and Patent Appeals reversed - use of computer cannot render it nonstatutory
• Analysis under 101
  • Courts should not read into the patent laws limitations and conditions which the legislature has not expressed
  • Have to interpret the word "process"
    • Under the below definition, this process is alright
• Cite several examples where computer algorithms or formulas were ruled invalid patents
  • Not suggesting a formula in this case
• Although using a mathematical equation, Diehr is only trying to patent the use of that equation with the specific steps in his process
  • Must consider claims as a whole
• Just because they decided it satisfies 101, it can still be ruled invalid based on 102 or 103 - not an issue in this case

Dissenting Judges

• Believe the court misread the patent application of Diehr
  • Also ignored critical distinction between the 101 issue and the 102 issue
• History of computer technology and patents
  • 1968 was when the federal courts addressed the issue, 1972 was when they announced their first decision
  • Before 1968 principles would have barred the issuing of patents to any computer program ("mental steps" and "function of a machine" doctrines)
  • Definition of process in Cochrane v. Deener (1877) said it had to cause a physical transformation in the material to which it is applied
  • PTO adopted guidelines in 1968
    • A computer program claimed as an apparatus or a process was unpatentable
    • Could be used as a component of a process if combined with non-obvious elements to produce a physical result
  • These eventually were reversed and the patentable subject matter came to include programs
    • Courts eventually poo-pooed both doctrines - mental steps and function of a machine
  • Finally said that patent protection could be obtained for a program if it were drafted in apparatus form
• The current patent teaches nothing new about the process for curing synthetic rubber
  • Discovery is a way of measuring the temperature inside the press
• Dissenters believe if the other interpreted right, then their decision was correct
  • If read their way, however, the decision was wrong
• Three reasons
  • Application did not mention any new or specific temperature-reading device
  • A process for constantly measuring temperature was not discovered
  • The only novel part is related to the calculation incident to the solution of the formula and the automatic opening
• Essence of the claimed discovery is an algorithm
  • Just as in Flook which was ruled invalid
• Patenting of computer programs is a very difficult subject

Patentability Laws

• Section 101 issues patents to

[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof ....

• A process that acts on a subject, if new and useful, is just at patentable as a piece of machinery
  • The machinery performing the process may not be patentable
• Cannot patent mathematical formula
• Whether a patent meets obvious or novelty requirements does not affect if it falls under eligible subject matter under 101
• History of 101
  • In 1952 Congress replaced the word "art" from the 1793 act with the word "process"
• Definition of the nature of patentable processes:

“That a process may be patentable, irrespective of the particular form of the instrumentalities used, cannot be disputed.... A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suitable to perform the process may or may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain things should be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence.” Cochrane v. Deener, 94 U.S. 780, 787-788, 24 L.Ed. 139 (1877). Analysis of the eligibility of a claim of patent protection for a “process” did not change with the addition of that term to § 101. Recently, in Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972), we repeated the above definition recited in Cochrane v. Deener, adding: “Transformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.” 409 U.S., at 70, 93 S.Ct., at 256

• Laws of nature, natural phenomena, and abstract ideas are exclude from patent protection
  • A process is not unpatentable just because it uses one of these, however
• Novelty should not be considered when looking at 101, it is entirely covered by 102

Class Notes

• Diehr is trying to patent a rubber-making process which constantly measures temperature and feeds it into an equation
  • Measuring the temperature constantly was the new feature
  • Trying to patent the entire ‘’process’’
• USSC determined the patent should be granted
  • Stated that just because a formula and computer was involved did not automatically dismiss the application
• Relied heavily upon precedent without giving logical reasons or looking to the statutes
• USSC liked the changing of the matter from one form to another
  • May still be incentive for processes that don’t do this however, so this standard isn’t very good

Dissenting judges

• Believed the court misinterpreted the patent application and that it was more or less just trying to patent a process
• Say that you can patent a computer program but that is not applicable in this place

Patentable subject matter

• Process for appealing during the application process

The Patent and Trademark Office Board of Appeals agreed with the examiner, but the Court of Customs and Patent Appeals reversed. In re Diehr, 602 F.2d 982 (1979). The court noted that a claim drawn to subject matter otherwise statutory does not become nonstatutory because a computer is involved. The respondents' claims were not directed to a mathematical algorithm or an improved method of calculation but rather recited an improved process for molding rubber articles by solving a practical problem which had risen in the molding of rubber products.

• Algorithms aren’t patentable
  • A process which involves an algorithm may still be patentable as long as it doesn’t remove the algorithm from public use
• Rely on very outdated cases for precedent because not many deal with 101
  • In the 50s, no one was trying to transform data back then like they do today
• Laws were written with the intent of promoting scientific advancement
• Quote in my notes above