Diamond v. Diehr (JWB)

The Case

• Diamond (petitioner) is Commissioner of Patents and Trademarks
• Diehr (respondent) filed patent application for a process for molding raw, uncured synthetic rubber into cured precision products (August 1975)
  • An established mathematical formula (Arrhenius equation) calculates when to open the molding press and remove the cured product when given time, temperature, and cure relationships
  • Respondents claim industry has trouble precisely measuring the temperature inside the press, making these computations difficult
    • temperature inside cure seem as ‘uncontrollable variable’, and conventional industry practice has been to calculate the cure time as the shortest time in which all parts will definitely be cured (often led to overcuring and undercuring the rubber)
  • Proposed invention constantly measures temperature inside mold and feeds measurements into a computer, which repeatedly recalculates cure time (using established formula) and signals a device to open the press at the proper time
• Patent examiner rejected claims based on 35 U.S.C. 101, PTO Board of Appeals agreed
  • claims are carried out by a computer under control of a stored program (similar to Gottschalk v. Benson), and the rest was convention
• Court of Customs and Patent Appeals reversed
  • claims not directed to a mathematical algorithm or an improved calculation method but rather an improved process by solving a practical problem
• Diamond sought certiorari and was granted
• Supreme Court
  • “If the computer helps prevent over- or under-curing, it is a patentable process
  • “While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be.” Mackay Radio & Telegraph Co. v. Radio of America (1939)
  • the “novelty” of any step in a process is not relevant in determining whether the subject matter is novel under 101

Dissention

• 4 judges
• Brief History
  • Prior to 1968, under the “mental steps” doctrine, processes involving mental operations were considered unpatentable
  • Definition of “process” announced by this Court in (1877) seemed to indicate that a patentable process must cause a physical transformation in the materials
  • In 1968, computer programs became included in inventions covered by 101 (a computer with a new program was new and different than a similar computer without that program)
  • 1969 – court concluded that the fact that a process may be performed mentally should not deny patentability if the process also may be performed without mental operations
  • 1978 – must determine whether a mathematical algorithm is directly or indirectly claimed; if an algorithm is recited, the court must then determine whether the claim would wholly pre-empt that algorithm
  • Benson
    • unpatentable subject matter was not limited to claims which wholly pre-empted an algorithm
    • an improved method of calculation (even when part of physical process) it not patentable
    • algorithm is treated for 101 purposes as though it were a familiar part of the prior art, then claim is examined to determine whether it has “some other inventive concept”
• Diehr and Lutton do not claim to have discovered anything new about the process for curing synthetic rubber
  • their discovery is an improved method of calculating the time that the mold should remain closed
• Parker v. Flook (1978) – Flook created a process for constantly measuring variables fed into a computer during a catalytic conversion – denied patent

“In Gottschalk v. Benson, we held that a program for the solution by a digital computer of a mathematical problem was not a patentable process within the meaning of § 101. In Parker v. Flook, we further held that such a computer program could not be transformed into a patentable process by the addition of postsolution activity that was not claimed to be novel.”

35 U.S.C. 101

• Under 101, a process or an act that transforms subject matter to a different state or thing (if new and useful) is just as patentable as a piece of machinery
• Mathematical formula (law of nature) cannot be the subject of a patent (Gottschalk v. Benson)
  • “A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.”
  • respondents not patenting the formula, but the process
• 1793 “any new and useful art, machine, manufacture or composition of matter, or any new or useful improvement”
• 1952 “art” was replaced with “process”
  • “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.”