EB: DIAMOND v. DIEHR, 450 U.S. 175 (1981)

The Situation

• Diehr files a patent for a process of constantly measuring the temperature inside a mold for curing synthetic rubber, and transfers the temperature measurements into a computer that "repeatedly recalculates" the cure time using a mathematical equation which then signals a device to open the mold at the proper time.
• Patent originally rejected, examiner cites prior case (Gottchalk) in regards to the unpatentable nature of computer programs
• The decision was appealed: Board of Appeals with patent office agreed to reject the patent, the actual Court of Appeals reversed the opinion - Supreme Court steps in to make a decision

The Decision

• Diehr's patent is valid; the subject matter is patentable.
  • However, it was a very slit decision (5 to 4)

Reasoning

• The subject matter, when taken as a whole, constitutes the "transform and reduce into a different state or thing" criteria of a "process" - the subject matter clearly transforms raw rubber into cured precision products.
• The patentee's do not seek to "pre-empt" the formula (Arrhenius equation), but only to get rights to its use in conjunction with all of the other steps in the claimed process.
  • The decision regarding the claims cannot be "altered by the fact that in several steps of the process a mathemetical equation and a programmed digital computer are used"
• While a scientific truth (the Arrhenius equation) cannot be patented, "a novel and useful structure created with the aid of knowledge of scientific truth may be"

Dissenting

• The others misinterpret the claims of the patent
• The others confuse patentable subject matter with novelty - see last bullet point of previous section
  • Diehr does not claim to have discovered anything new about the process for curing synthetic rubber
  • The curing process is previously known, as is the general method of continuously measuring temperature
• The invention makes no contribution to the art that is not "entirely dependent upon the utilization of a computer in a familiar process" - thus, it should not be patentable

In Class

• The issue here is not any type of thermocouple or device, it is the process
• Within the patent office there is a "Board of Appeals" in which an applicant can challenge an examiners decision - that is what happened first in this case, but the patent was ruled invalid by this board, so the case was appealed further.
• Material distinction is an important part of determining what constitutes a process- Diehr's claims meet this criteria.
• Is transformation of data the same as transformation of physical material? In modern terms, there does not seem to be much distinction - both have economic incentives
  • There are distinctions between "first principles" of data transformation, and higher level mathematical transformations - the later seems more patentable. Although, things like a user-interface seem more like expressions (i.e. copyright material) than inventions (patentable materials)
  • Main way computer programs are protected is via copyright - easier to get than a patent, but essentially just prevents someone from copying the code exactly - even though they could just re-write a different expression of the same concepts of your code. Also, copyrights are valid for ~50 years which is pretty ridiculous because computer programs become obsolete in ~5-10 years.
• Note: this decision was completely a conservative vs. liberal split of the court (liberals voted for validity of the patent, conservatives dissented)
• Dissenting cites the "mental steps doctrine" - they feel that mental steps in and of themselves should not be patentable
  • The deciding opinion thought that dissenting was disregarding the old parts of the patent, that together with the new algorithm, make a patentable whole