Diamond v. Diehr (JWB Class)

The Case

• Diehr applies for patent for new process for curing rubber
  • constantly measure temperature during process
  • attempt to patent the process
• Applicant won case – granted patent
• Made physical change to rubber

Dissenting Judges

• Complete conservative (dissenters) versus liberal (majority) split
• Based on precedent (decisions in prior cases), without saying whether the precedent is right or wrong
  • Most cases involving 101 are very outdated, and those cases are what the dissenters were relying on
• Cannot use algorithms
  • Court decided that while algorithms are not patentable, but something that uses an algorithm is not an algorithm
• Thought CCPA ignored the precedent cases
• This case involved mental steps, which were deemed unpatentable by previous cases
• Improvement on calculation (of temperature), not the process

Patentable Material

• If patent is denied, an applicant can appeal to the Patent and Trademark Office Board of Appeals, and then the Court of Customs and Patent Appeals
• Process’ patentability:

“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.”

• What would come out of the ‘1980 Patentability Handbook’: “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.”
  • There might still be economic incentives for processes that do not make physical changes, so this process may not be very good
    • Amazon denied patent for ‘one-click book buying’
      • like A & P, just a business strategy, a more-efficient checkout
      • nothing can build off of it (does not promote scientific advancement)