''Diamond v. Diehr'', 450 U.S. 175 (1981), was a

United States Supreme Court The Supreme Court of the United States (SCOTUS) is the highest court in the federal judiciary of the United States. It has ultimate appellate jurisdiction over all U.S. federal court cases, and over state court cases that involve a point o ...

decision which held that controlling the execution of a physical process, by running a computer program did not preclude

patentability Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met fo ...

of the invention as a whole. 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 the

patent-eligibility Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries provide that certain subject-matter is excluded from patentability, even if the inv ...

of computer software related inventions.

Background

The problem and its solution

The inventors, respondents, filed a

patent application A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and re ...

for a " rocessfor molding raw, uncured synthetic 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 the

Arrhenius equation In physical chemistry, the Arrhenius equation is a formula for the temperature dependence of reaction rates. The equation was proposed by Svante Arrhenius in 1889, based on the work of Dutch chemist Jacobus Henricus van 't Hoff who had noted in 1 ...

$k = A e^$
which may be restated as ''ln''(''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.

The claims

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:

Proceedings before Office and CCPA

The

patent examiner A patent examiner (or, historically, a patent clerk) is an employee, usually a civil servant with a scientific or engineering background, working at a patent office. Major employers of patent examiners are the European Patent Office (EPO), the Un ...

rejected this invention as unpatentable subject matter under 35 U.S.C. 101. He argued that the steps performed by the computer were unpatentable as a computer program under '' Gottschalk v. Benson''. The

Board of Patent Appeals and Interferences The Board of Patent Appeals and Interferences (BPAI) was an administrative law body of the United States Patent and Trademark Office (USPTO) which decided issues of patentability. Under the America Invents Act, the BPAI was replaced with the Pa ...

of the

USPTO The United States Patent and Trademark Office (USPTO) is an agency in the U.S. Department of Commerce that serves as the national patent office and trademark registration authority for the United States. The USPTO's headquarters are in Alexa ...

affirmed the rejection. The

Court of Customs and Patent Appeals The United States Court of Customs and Patent Appeals (CCPA) was a United States federal court which existed from 1909 to 1982 and had jurisdiction over certain types of civil disputes. History The CCPA began as the United States Court of Customs ...

(CCPA), the predecessor to the current

Court of Appeals for the Federal Circuit The United States Court of Appeals for the Federal Circuit (in case citations, Fed. Cir. or C.A.F.C.) is a United States court of appeals that has special appellate jurisdiction over certain types of specialized cases in the U.S. federal court ...

, 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 for certiorari by the Commissioner of Patents and Trademarks to resolve this question.

The Supreme Court's opinion

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 mathematical

algorithm In mathematics and computer science, an algorithm () is a finite sequence of rigorous instructions, typically used to solve a class of specific problems or to perform a computation. Algorithms are used as specifications for performing ...

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 overruling ''Benson'' or ''Flook''. It did criticize the analytic methodology of ''Flook'', however, by challenging its use of

analytic dissection Analytic dissection is a concept in U.S. copyright law analysis of computer software. Analytic dissection is a tool for determining whether a work accused of copyright infringement is substantially similar to a copyright-protected work. In analyti ...

, which the ''Flook'' Court based on '' Neilson v. Harford''. The ''Diehr'' 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 governs ''the kind of subject matter'' that can be patented, while concerns for novelty and non-obviousness are considered separately under sections 102 and 103: :In determining the eligibility of respondents' claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim, because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The "novelty" of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter. :It has been urged that novelty is an appropriate consideration under § 101. Presumably, this argument results from the language in § 101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow and § 102 covers in detail the conditions relating to novelty. The question therefore of whether a particular invention is novel is “wholly apart from whether the invention falls into a category of statutory subject matter.”

The patent

The patent that issued after the decision was U.S. Patent 4,344,142, "Direct digital control of rubber molding presses.". 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 in ''Diehr'' 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."

Subsequent developments

For many years, it was believed that ''Diehr'' effectively overruled ''Flook'', despite the majority opinion's avoiding any such statement. In 2012, in '' Mayo v. Prometheus'', the unanimous opinion of the Supreme Court interpreted ''Diehr'' so as to harmonize it with ''Flook''. The Court "found the overall process patent eligible because of the way the additional steps of the process esides the equationintegrated the equation into the process as a whole." 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."''Mayo'', 132 S. Ct. at 1299. "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." The Court interpreted ''Diehr'' slightly differently in ''

Alice v. CLS Bank Alice may refer to: * Alice (name), most often a feminine given name, but also used as a surname Literature * Alice (''Alice's Adventures in Wonderland''), a character in books by Lewis Carroll * ''Alice'' series, children's and teen books by ...

'', another unanimous opinion, but without taking issue with the ''Mayo'' interpretation. The ''Alice'' Court said:

In ''Diehr'', by contrast ith ''Flook'' 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 in ''Diehr'' used a "thermocouple" to record constant temperature measurements inside the rubber mold — something "the industry ha 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 in ''Diehr'' were patent eligible because they improved an existing technological process, not because they were implemented on a computer.134 S. Ct. at 2358 (citations omitted).

These two opinions state the current Supreme Court interpretation of what the ''Diehr'' case holds.

References

External links

* {{caselaw source , case = ''Diamond v. Diehr'', {{Ussc, 450, 175, 1981, el=no , cornell = https://www.law.cornell.edu/supremecourt/text/450/175 , courtlistener =https://www.courtlistener.com/opinion/110422/diamond-v-diehr/ , findlaw = https://caselaw.findlaw.com/us-supreme-court/450/175.html , googlescholar = https://scholar.google.com/scholar_case?case=18347506438226183982 , justia =https://supreme.justia.com/cases/federal/us/450/175/case.html , loc =http://cdn.loc.gov/service/ll/usrep/usrep450/usrep450175/usrep450175.pdf , oyez =https://www.oyez.org/cases/1980/79-1112
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